MPEP 1500

Chapter 1500 Design Patents

1501 Statutes and Rules Applicable

The right to a patent for a design stems from:

37 CFR 1.152-1.155, which relate only to design patents, are reproduced in the sections of this chapter.

It is noted that design patent applications are not included in the Patent Cooperation Treaty (PCT), and the procedures followed for PCT international applications are not to be followed for design patent applications.

The practices set forth in other chapters of this Manual of Patent Examining Procedure (MPEP) are to be followed in examining applications for design patents, except as particularly pointed out in the chapter.

1502 Definition of a Design

In a design patent application, the subject matter which is claimed is the design embodied in or applied to an article of manufacture (or portion thereof) and not the article itself. Ex parte Cady, 1916 C.D. 62, 232 O.G. 621 (Comm’r Pat. 1916). “[35 U.S.C.] 171 refers, not to the design of an article, but to the design for an article, and is inclusive of ornamental designs of all kinds including surface ornamentation as well as configuration of goods.” In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980).

The design for an article consists of the visual characteristics embodied in or applied to an article.

Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation.

Design is inseparable from the article to which it is applied and cannot exist alone merely as a scheme of surface ornamentation. It is the appearance presented by the article which creates an impression through the eye upon the mind of the observer. It must be a definite, preconceived thing, capable of reproduction and not merely the chance result of a method.

Since a design is manifested in appearance, the subject matter of a Design Patent may relate to the configuration or shape of an article, to the surface ornamentation on an article, or to both.

1502.01 Distinction Between Design and Utility Patents

In general terms, a “utility patent” protects the way an article is used and works (35 U.S.C. 101), while a “design patent” protects the way an article looks (35 U.S.C. 171). The ornamental appearance for an article includes its shape/configuration or surface ornamentation applied to the article, or both. Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance.

While utility and design patents afford legally separate protection, the utility and ornamentality of an article may not be easily separable. Articles of manufacture may possess both functional and ornamental characteristics.

Some of the more common differences between design and utility patents are summarized below:

(A)The term of a utility patent on an application filed on or after June 8, 1995 is 20 years measured from the U.S. filing date; or if the application contains a specific reference to an earlier application under 35 U.S.C. 120, 121, or 365(c), 20 years from the earliest effective U.S. filing date, while the term of a design patent is 14 years measured from the date of grant (see 35 U.S.C. 173).

(B)Maintenance fees are required for utility patents (see 37 CFR 1.20), while no maintenance fees are required for design patents.

(C)Design patent applications include only a single claim, while utility patent applications can have multiple claims.

(D)Restriction between plural, distinct inventions is discretionary on the part of the examiner in utility patent applications (see MPEP § 803), while it is mandatory in design patent applications (see MPEP § 1504.05).

(E)An international application naming various countries may be filed for utility patents under the Patent Cooperation Treaty (PCT), while no such provision exists for design patents.

(F)Foreign priority under 35 U.S.C. 119(a)-(d) can be obtained for the filing of utility patent applications up to 1 year after the first filing in any country subscribing to the Paris Convention, while this period is only 6 months for design patent applications (see 35 U.S.C. 172).

(G)Utility patent applications may claim the benefit of a provisional application under 35 U.S.C. 119(e) whereas design patent applications may not. See 35 U.S.C. 172 and 37 CFR 1.78 (a)(4).

(H)A Request for Continued Examination (RCE) under 37 CFR 1.114 may only be filed in utility and plant applications filed under 35 U.S.C. 111(a) on or after June 8, 1995, while RCE is not available for design applications (see 37 CFR 1.114(e)).

(I) Effective July 14, 2003, continued prosecution application (CPA) practice under 37 CFR 1.53(d) is only available for design applications (see 37 CFR 1.53(d)(1)(i)). Prior to July 14, 2003, CPA practice was available for utility and plant applications only where the prior application has a filing date prior to May 29, 2000 .

(J)Utility patent applications filed on or after November 29, 2000 are subject to application publication under 35 U.S.C. 122(b)(1)(A), whereas design applications are not subject to application publication (see 35 U.S.C. 122(b)(2)).

Other distinctions between design and utility patent practice are detailed in this chapter. Unless otherwise provided, the rules for applications for utility patents are equally applicable to applications for design patents (35 U.S.C. 171 and 37 CFR 1.151).

1503 Elements of a Design Patent Application

A design patent application has essentially the elements required of an application for a utility patent filed under 35 U.S.C. 101 (see Chapter 600). The arrangement of the elements of a design patent application and the sections of the specification are as specified in 37 CFR 1.154.

A claim in a specific form is a necessary element of a design patent application. See MPEP § 1503.01, subsection III.

A drawing is an essential element of a design patent application. See MPEP § 1503.02 for requirements for drawings.

1503.01 Specification

¶ 15.05 Design Patent Specification Arrangement

The following order or arrangement should be observed in framing a design patent specification:

(1)Preamble, stating name of the applicant, title of the design, and a brief description of the nature and intended use of the article in which the design is embodied.

(2)Cross-reference to related applications unless included in the application data sheet.

(3)Statement regarding federally sponsored research or development.

(4)Description of the figure or figures of the drawing.

(5)Descriptive statement, if any.

(6)A single claim.

I. PREAMBLE AND TITLE

A preamble, if included, should state the name of the applicant, the title of the design, and a brief description of the nature and intended use of the article in which the design is embodied (37 CFR 1.154).

The title of the design identifies the article in which the design is embodied by the name generally known and used by the public but it does not define the scope of the claim. See MPEP § 1504.04, subsection I.A. The title may be directed to the entire article embodying the design while the claimed design shown in full lines in the drawings may be directed to only a portion of the article. However, the title may not be directed to less than the claimed design shown in full lines in the drawings. A title descriptive of the actual article aids the examiner in developing a complete field of search of the prior art and further aids in the proper assignment of new applications to the appropriate class, subclass, and patent examiner, and the proper classification of the patent upon allowance of the application. It also helps the public in understanding the nature and use of the article embodying the design after the patent has been issued. For example, a broad title such as “Adapter Ring” provides little or no information as to the nature and intended use of the article embodying the design. If a broad title is used, the description of the nature and intended use of the design may be incorporated into the preamble. Absent an amendment requesting deletion of the description, it would be printed on any patent that would issue.

When a design is embodied in an article having multiple functions or comprises multiple independent parts or articles that interact with each other, the title must clearly define them as a single entity, for example, combined or combination, set, pair, unit assembly.

Since 37 CFR 1.153 requires that the title must designate the particular article, and since the claim must be in formal terms to the “ornamental design for the article (specifying name) as shown, or as shown and described,” the title and claim must correspond. When the title and claim do not correspond, the title should be objected to under 37 CFR 1.153 as not corresponding to the claim.

However, it is emphasized that, under the second paragraph of 35 U.S.C. 112, the claim defines “the subject matter which the applicant regards as his invention” (emphasis added); that is, the ornamental design to be embodied in or applied to an article. Thus, the examiner should afford the applicant substantial latitude in the language of the title/claim. The examiner should only require amendment of the title/ claim if the language is clearly misdescriptive, inaccurate, or unclear (i.e., the language would result in a rejection of the claim under 35 U.S.C. 112, second paragraph; see MPEP § 1504.04, subsection III). The use of language such as “or the like” or “or similar article” in the title when directed to the environmentof the article embodying the design will not be the basis for a rejection of the claim under 35 U.S.C. 112, second paragraph. Such language is indefinite when it refers to the area of articles defining the subject matter of the design. An acceptable title would be “door for cabinets, houses, or the like,” while the title “door or the like” would be unacceptable and the claim will be rejected under 35 U.S.C. 112, second paragraph. Ex parte Pappas, 23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992). See also MPEP § 1504.04; subsection III.

Amendments to the title, whether directed to the article in which the design is embodied or its environment, must have antecedent basis in the original disclosure and may not introduce new matter. Ex parte Strijland, 26 USPQ2d 1259 (Bd. Pat. App. & Inter. 1992). If an amendment to the title is directed to the environment in which the design is used and the amendment would introduce new matter, the amendment to the title must be objected to under 35 U.S.C. 132. If an amendment to the title is directed to the article in which the design is embodied and the amendment would introduce new matter, in addition to the objection under 35 U.S.C. 132, the claim must be rejected under 35 U.S.C. 112, first paragraph.

Any amendment to the language of the title should also be made at each occurrence thereof throughout the application, except in the oath or declaration. If the title of the article is not present in the original figure descriptions, it is not necessary to incorporate the title into the descriptions as part of any amendment to the language of the title.

¶ 15.05.01 Title of Design Invention

The title of a design being claimed must correspond to the name of the article in which the design is embodied or applied to. See MPEP § 1503.01.

II. DESCRIPTION

No description of the design in the specification beyond a brief description of the drawing is generally necessary, since as a rule the illustration in the drawing views is its own best description. In re Freeman, 23 App. D.C. 226 (App. D.C. 1904). However, while not required, such a description is not prohibited and may be incorporated, at applicant’s option, into the specification or may be provided in a separate paper. Ex parte Spiegel, 1919 C.D. 112, 268 O.G. 741 (Comm’r Pat. 1919). Descriptions of the figures are not required to be written in any particular format, however, if they do not describe the views of the drawing clearly and accurately, the examiner should object to the unclear and/or inaccurate descriptions and suggest language which is more clearly descriptive of the views.

In addition to the figure descriptions, the following types of statements are permissible in the specification:

(A)Description of the appearance of portions of the claimed design which are not illustrated in the drawing disclosure. Such a description, if provided, must be in the design application as originally filed, and may not be added by way of amendment after the filing of the application as it would be considered new matter.

(B)Description disclaiming portions of the article not shown in the drawing as forming no part of the claimed design.

(C)Statement indicating the purpose of broken lines in the drawing, for example, environmental structure or boundaries that form no part of the design to be patented.

(D)Description denoting the nature and environmental use of the claimed design, if not included in the preamble pursuant to 37 CFR 1.154 and MPEP § 1503.01, subsection I.

It is the policy of the Office to attempt to resolve questions about the nature and intended use of the claimed design prior to examination by making a telephone inquiry at the time of initial docketing of the application. This will enable the application to be properly classified and docketed to the appropriate examiner and to be searched when the application comes up for examination in its normal course without the need for a rejection under 35 U.S.C. 112 prior to a search of the prior art. Explanation of the nature and intended use of the article may be added to the specification provided it does not constitute new matter. It may alternately, at applicant’s option, be submitted in a separate paper without amendment of the specification.

(E)A “characteristic features” statement describing a particular feature of the design that is considered by applicant to be a feature of novelty or nonobviousness over the prior art (37 CFR 1.71(c)).

This type of statement may not serve as a basis for determining patentability by an examiner. In determining the patentability of a design, it is the overall appearance of the claimed design which must be taken into consideration. In re Rosen, 673 F.2d 388, 213 USPQ 347 (CCPA 1982); In re Leslie, 547 F.2d 116, 192 USPQ 427 (CCPA 1977). Furthermore, the inclusion of such a statement in the specification is at the option of applicant and will not be suggested by the examiner.

¶ 15.47.01 Feature Statement Caution

The inclusion of a feature statement in the specification is noted. However, the patentability of the claimed design is not based on the specified feature but rather on a comparison of the overall appearance of the design with the prior art. In re Leslie, 547 F.2d 116, 192 USPQ 427 (CCPA 1977).

The following types of statements are not permissible in the specification:

(A)A disclaimer statement directed to any portion of the claimed design that is shown in solid lines in the drawings is not permitted in the specification of an issued design patent. However, the disclaimer statement may be included in the design application as originally filed to provide antecedent basis for a future amendment. See Ex parte Remington, 114 O.G. 761, 1905 C.D. 28 (Comm’r Pat. 1904); In re Blum, 374 F.2d 904, 153 USPQ 177 (CCPA 1967).

(B)Statements which describe or suggest other embodiments of the claimed design which are not illustrated in the drawing disclosure, except one that is a mirror image of that shown or has a shape and appearance that would be evident from the one shown, are not permitted in the specification of an issued design patent. However, such statements may be included in the design application as originally filed to provide antecedent basis for a future amendment. In addition, statements which attempt to broaden the scope of the claimed design beyond that which is shown in the drawings are not permitted.

(C)Statements describing matters that are directed to function or are unrelated to the design.

¶ 15.41 Functional, Structural Features Not Considered

Attention is directed to the fact that design patent applications are concerned solely with the ornamental appearance of an article of manufacture. The functional and/or structural features stressed by applicant in the papers are of no concern in design cases, and are neither permitted nor required. Function and structure fall under the realm of utility patent applications.

III. DESIGN CLAIM

The requirements for utility claims specified in 37 CFR 1.75 do not apply to design claims. Instead, the form and content of a design claim is set forth in 37 CFR 1.153:

A design patent application may only include a single claim. The single claim should normally be in formal terms to “The ornamental design for (the article which embodies the design or to which it is applied) as shown.” The description of the article in the claim should be consistent in terminology with the title of the invention. See MPEP § 1503.01, subsection I.

When the specification includes a proper descriptive statement of the design (see MPEP § 1503.01, subsection II), or a proper showing of modified forms of the design or other descriptive matter has been included in the specification, the words “and described” must be added to the claim following the term “shown”; i.e., the claim must read “The ornamental design for (the article which embodies the design or to which it is applied) as shown and described.”

Full lines in the drawing show the claimed design. Broken lines are used for numerous purposes. Under some circumstances, broken lines are used to illustrate the claimed design (i.e., stitching and fold lines). Broken lines are not permitted for the purpose of identifying portions of the claimed design which are immaterial or unimportant. See In re Blum, 374 F.2d 904, 907, 153 USPQ 177, 180 (CCPA 1967) (there are “no portions of a design which are ‘immaterial’ or ‘not important.’ A design is a unitary thing and all of its portions are material in that they contribute to the appearance which constitutes the design.”). See also MPEP § 1503.02, subsection III.

1503.02 Drawing

Every design patent application must include either a drawing or a photograph of the claimed design. As the drawing or photograph constitutes the entire visual disclosure of the claim, it is of utmost importance that the drawing or photograph be clear and complete, and that nothing regarding the design sought to be patented is left to conjecture.

When inconsistencies are found among the views, the examiner should object to the drawings and request that the views be made consistent. Ex parte Asano, 201 USPQ 315, 317 (Bd. Pat. App. & Inter. 1978); Hadco Products, Inc. v. Lighting Corp. of America Inc., 312 F. Supp. 1173, 1182, 165 USPQ 496, 503 (E.D. Pa. 1970), vacated on other grounds, 462 F.2d 1265, 174 USPQ 358 (3d Cir. 1972). When the inconsistencies are of such magnitude that the overall appearance of the design is unclear, the claim should be rejected under 35 U.S.C. 112, first and second paragraphs, as nonenabling and indefinite. See MPEP § 1504.04, subsection I.A.

In addition to the criteria set forth in 37 CFR 1.81- 1.88, design drawings must also comply with 37 CFR 1.152 as follows:

I. VIEWS

The drawings or photographs should contain a sufficient number of views to disclose the complete appearance of the design claimed, which may include the front, rear, top, bottom and sides. Perspective views are suggested and may be submitted to clearly show the appearance of three dimensional designs. If a perspective view is submitted, the surfaces shown would normally not be required to be illustrated in other views if these surfaces are clearly understood and fully disclosed in the perspective.

Views that are merely duplicative of other views of the design or that are flat and include no surface ornamentation may be omitted from the drawing if the specification makes this explicitly clear. See MPEP § 1503.01, subsection II. For example, if the left and right sides of a design are identical or a mirror image, a view should be provided of one side and a statement made in the drawing description that the other side is identical or a mirror image. If the design has a flat bottom, a view of the bottom may be omitted if the specification includes a statement that the bottom is flat and devoid of surface ornamentation. The term “unornamented” should not be used to describe visible surfaces which include structure that is clearly not flat. Philco Corp. v. Admiral Corp., 199 F. Supp. 797, 131 USPQ 413 (D. Del. 1961).

Sectional views presented solely for the purpose of showing the internal construction or functional/ mechanical features are unnecessary and may lead to confusion as to the scope of the claimed design. Ex parte Tucker, 1901 C.D. 140, 97 O.G. 187 (Comm’r Pat. 1901); Ex parte Kohler, 1905 C.D. 192, 116 O.G. 1185 (Comm’r Pat. 1905). Such views should be objected to under 35 U.S.C. 112, second paragraph, and their cancellation should be required. However, where the exact contour or configuration of the exterior surface of a claimed design is not apparent from the views of the drawing, and no attempt is made to illustrate features of internal construction, a sectional view may be included to clarify the shape of said design. Ex parte Lohman, 1912 C.D. 336, 184 O.G. 287 (Comm’r Pat. 1912). When a sectional view is added during prosecution, the examiner must determine whether there is antecedent basis in the original disclosure for the material shown in hatching in the sectional view (37 CFR 1.84(h)(3) and MPEP § 608.02).

II. SURFACE SHADING

While surface shading is not required under 37 CFR 1.152, it may be necessary in particular cases to shade the figures to show clearly the character and contour of all surfaces of any 3-dimensional aspects of the design. Surface shading is also necessary to distinguish between any open and solid areas of the article. However, surface shading should not be used on unclaimed subject matter, shown in broken lines, to avoid confusion as to the scope of the claim.

Lack of appropriate surface shading in the drawing as filed may render the design nonenabling and indefinite under 35 U.S.C. 112, first and second paragraphs. Additionally, if the surface shape is not evident from the disclosure as filed, the addition of surface shading after filing may comprise new matter. Solid black surface shading is not permitted except when used to represent the color black as well as color contrast. Oblique line shading must be used to show transparent, translucent and highly polished or reflective surfaces, such as a mirror. Contrast in materials may be shown by using line shading in one area and stippling in another. By using this technique, the claim will broadly cover contrasting surfaces unlimited by colors. The claim would not be limited to specific material either, as long as the appearance of the material does not patentably depart from the visual appearance illustrated in the drawing.

III. BROKEN LINES

The two most common uses of broken lines are to disclose the environment related to the claimed design and to define the bounds of the claim. Structure that is not part of the claimed design, but is considered necessary to show the environment in which the design is associated, may be represented in the drawing by broken lines. This includes any portion of an article in which the design is embodied or applied to that is not considered part of the claimed design. In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980). Unclaimed subject matter may be shown in broken lines for the purpose of illustrating the environment in which the article embodying the design is used. Unclaimed subject matter must be described as forming no part of the claimed design or of a specified embodiment thereof. A boundary line may be shown in broken lines if it is not intended to form part of the claimed design. Applicant may choose to define the bounds of a claimed design with broken lines when the boundary does not exist in reality in the article embodying the design. It would be understood that the claimed design extends to the boundary but does not include the boundary. Where no boundary line is shown in a design application as originally filed, but it is clear from the design specification that the boundary of the claimed design is a straight broken line connecting the ends of existing full lines defining the claimed design, applicant may amend the drawing(s) to add a straight broken line connecting the ends of existing full lines defining the claimed subject matter. Any broken line boundary other than a straight broken line may constitute new matter prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f).

However, broken lines are not permitted for the purpose of indicating that a portion of an article is of less importance in the design. In re Blum, 374 F.2d 904, 153 USPQ 177 (CCPA 1967). Broken lines may not be used to show hidden planes and surfaces which cannot be seen through opaque materials. The use of broken lines indicates that the environmental structure or the portion of the article depicted in broken lines forms no part of the design, and is not to indicate the relative importance of parts of a design.

In general, when broken lines are used, they should not intrude upon or cross the showing of the claimed design and should not be of heavier weight than the lines used in depicting the claimed design. When broken lines cross over the full line showing of the claimed design and are defined as showing environment, it is understood that the surface which lies beneath the broken lines is part of the claimed design. When the broken lines crossing over the design are defined as boundaries, it is understood that the area within the broken lines is not part of the claimed design. Therefore, when broken lines are used which cross over the full line showing of the design, it is critical that the description of the broken lines in the specification explicitly identifies their purpose so that the scope of the claim is clear. As it is possible that broken lines with different purposes may be included in a single application, the description must make a visual distinction between the two purposes; such as --The broken lines immediately adjacent the shaded areas represent the bounds of the claimed design while all other broken lines are directed to environment and are for illustrative purposes only; the broken lines form no part of the claimed design.-- Where a broken line showing of environmental structure must necessarily cross or intrude upon the representation of the claimed design and obscures a clear understanding of the design, such an illustration should be included as a separate figure in addition to the other figures which fully disclose the subject matter of the design. Further, surface shading should not be used on unclaimed subject matter shown in broken lines to avoid confusion as to the scope of the claim.

IV. SURFACE TREATMENT

The ornamental appearance of a design for an article includes its shape and configuration as well as any indicia, contrasting color or materials, graphic representations, or other ornamentation applied to the article (“surface treatment”). Surface treatment must be applied to or embodied in an article of manufacture. Surface treatment, per se (i.e., not applied to or embodied in a specific article of manufacture), is not proper subject matter for a design patent under 35 U.S.C. 171. Surface treatment may either be disclosed with the article to which it is applied or in which it is embodied and must be shown in full lines or in broken lines (if unclaimed) to meet the statutory requirement. See MPEP § 1504.01. The guidelines that apply for disclosing computer-generated icons apply equally to all types of surface treatment. See MPEP § 1504.01(a).

A disclosure of surface treatment in a design drawing or photograph will normally be considered as prima facie evidence that the inventor considered the surface treatment shown as an integral part of the claimed design. An amendment canceling two-dimensional surface treatment or reducing it to broken lines will be permitted if it is clear from the application that applicant had possession of the underlying configuration of the basic design without the surface treatment at the time of filing of the application. See In re Daniels, 144 F.3d 1452, 1456-57, 46 USPQ2d 1788, 1790 (Fed. Cir. 1998). Applicant may remove surface treatment shown in a drawing or photograph of a design without such removal being treated as new matter, provided that the surface treatment does not obscure or override the underlying design. The removal of three-dimensional surface treatment that is an integral part of the configuration of the claimed design, for example, removal of beading, grooves, and ribs, will introduce prohibited new matter as the underlying configuration revealed by this amendment would not be apparent in the application as originally filed. See MPEP § 1504.04, subsection II.

V. PHOTOGRAPHS AND COLOR DRAWINGS

Drawings are normally required to be submitted in black ink on white paper. See 37 CFR 1.84(a)(1). Photographs are acceptable only in applications in which the invention is not capable of being illustrated in an ink drawing or where the invention is shown more clearly in a photograph (e.g., photographs of ornamental effects are acceptable). See also 37 CFR 1.81(c) and 1.83(c), and MPEP § 608.02.

Photographs submitted in lieu of ink drawings must comply with 37 CFR 1.84(b). Only one set of black and white photographs is required. Color photographs and color drawings may be submitted in design applications if filed with a petition under 37 CFR 1.84(a)(2). Petitions to accept color photographs or color drawings will be considered by the Primary Examiners as delegated by the TC Director. A grantable petition under 37 CFR 1.84(a)(2) must explain that color drawings or color photographs are necessary because color is an integral part of the claimed design. Any other explanation as to why color drawings or color photographs are necessary will normally not be acceptable. A grantable petition must also be accompanied by: (1) the fee set forth in 37 CFR 1.17(h); (2) three sets of the color photographs or color drawings; and (3) an amendment to the specification inserting the following statement --The file of this patent contains at least one drawing/photograph executed in color. Copies of this patent with color drawing(s)/photograph(s) will be provided by the Office upon request and payment of the necessary fee.-- See 37 CFR 1.84(a)(2)(iii) and MPEP § 608.02. If the photographs are not of sufficient quality so that all details in the photographs are reproducible, this will form the basis of subsequent objection to the quality of the photographic disclosure. No application will be issued until objections directed to the quality of the photographic disclosure have been resolved and acceptable photographs have been submitted and approved by the examiner. If the details, appearance and shape of all the features and portions of the design are not clearly disclosed in the photographs, this would form the basis of a rejection of the claim under 35 U.S.C. 112, first and second paragraphs, as nonenabling and indefinite.

Photographs and ink drawings must not be combined in a formal submission of the visual disclosure of the claimed design in one application. The introduction of both photographs and ink drawings in a design application would result in a high probability of inconsistencies between corresponding elements on the ink drawings as compared with the photographs.

When filing informal photographs or informal drawings with the original application, a disclaimer included in the specification or on the photographs themselves may be used to disclaim any surface ornamentation, logos, written matter, etc. which form no part of the claimed design. See also MPEP § 1504.04, subsection II.

Color photographs and color drawings may be submitted in design applications if filed with a petition under 37 CFR 1.84(a)(2). Color may also be shown in pen and ink drawings by lining the surfaces of the design for color in accordance with the symbols in MPEP § 608.02. If the formal drawing in an application is lined for color, the following statement should be inserted in the specification for clarity and to avoid possible confusion that the lining may be surface treatment --The drawing is lined for color.-- However, lining a surface for color may interfere with a clear showing of the design as required by 35 U.S.C. 112, first paragraph, as surface shading cannot be used to define the contours of the design.

If color photographs or color drawings are filed with the original application, color will be considered an integral part of the disclosed and claimed design. The omission of color in later filed formal photographs or drawings will be permitted if it is clear from the application that applicant had possession of the underlying configuration of the basic design without the color at the time of filing of the application. See In re Daniels, 144 F.3d 1452, 1456-57, 46 USPQ2d 1788, 1790 (Fed. Cir. 1998) and MPEP 1504.04, subsection II. Note also 37 CFR 1.152, which requires that the disclosure in formal photographs be limited to the design for the article claimed.

1504 Examination

In design patent applications, ornamentality, novelty, nonobviousness enablement and definiteness are necessary prerequisites to the grant of a patent. The inventive novelty or unobviousness resides in the ornamental shape or configuration of the article in which the design is embodied or the surface ornamentation which is applied to or embodied in the design.

Novelty and nonobviousness of a design claim must generally be determined by a search in the pertinent design classes. It is also mandatory that the search be extended to the mechanical classes encompassing inventions of the same general type. Catalogs and trade journals as well as available foreign patent databases are also to be consulted.

If the examiner determines that the claim of the design patent application does not satisfy the statutory requirements, the examiner will set forth in detail, and may additionally summarize, the basis for all rejections in an Official action. If a reply to an Office action overcomes a rejection either by way of an amendment to the claim or by providing convincing arguments that the rejection should be withdrawn, that rejection must be indicated as withdrawn in the next Office action, unless such action is a notice of allowability. Likewise, any amendment to the specification or claim, or new drawing or drawing correction submitted in reply to an objection or objections in an Office action must be acknowledged in the next Office action, unless such action is a notice of allowability. When an examiner determines that the claim in a design application is patentable under all statutory requirements, but formal matters still need to be addressed and corrected prior to allowance, an Ex parte Quayle action will be sent to applicant indicating allowability of the claim and identifying the necessary corrections.

With respect to pro se design applications, the examiner should notify applicant in the first Office action that it may be desirable for applicant to employ the services of a registered patent attorney or agent to prosecute the application. Applicant should also be notified that the U.S. Patent and Trademark Office cannot aid in the selection of an attorney or agent. If it appears that patentable subject matter is present and the disclosure of the claimed design complies with the requirements of 35 U.S.C.112, the examiner should include a copy of the “Guide To Filing A Design Patent Application” with the first Office action and notify applicant that it may be desirable to employ the services of a professional patent draftsperson familiar with design practice to prepare the formal drawings. Applicant should also be notified that the U.S. Patent and Trademark Office cannot aid in the selection of a draftsperson. The following form paragraph, where appropriate, may be used.

1504.01 Statutory Subject Matter for Designs

The language "new, original and ornamental design for an article of manufacture" set forth in 35 U.S.C. 171 has been interpreted by the case law to include at least three kinds of designs:

(A)a design for an ornament, impression, print, or picture applied to or embodied in an article of manufacture (surface indicia);

(B)a design for the shape or configuration of an article of manufacture; and

(C)a combination of the first two categories.

See In re Schnell, 46 F.2d 203, 8 USPQ 19 (CCPA 1931); Ex parte Donaldson, 26 USPQ2d 1250 (Bd. Pat. App. & Int. 1992).

A picture standing alone is not patentable under 35 U.S.C. 171. The factor which distinguishes statutory design subject matter from mere picture or ornamentation, per se (i.e., abstract design), is the embodiment of the design in an article of manufacture. Consistent with 35 U.S.C. 171, case law and USPTO practice, the design must be shown as applied to or embodied in an article of manufacture.

A claim to a picture, print, impression, etc. per se, that is not applied to or embodied in an article of manufacture should be rejected under 35 U.S.C. 171 as directed to nonstatutory subject matter.

1504.01(a) Computer-Generated Icons

To be directed to statutory subject matter, design applications for computer-generated icons must comply with the “article of manufacture” requirement of 35 U.S.C. 171.

I.GUIDELINES FOR EXAMINATION OF DESIGN PATENT APPLICATIONS FOR COMPUTER-GENERATED ICONS

The following guidelines have been developed to assist USPTO personnel in determining whether design patent applications for computer-generated icons comply with the “article of manufacture” requirement of 35 U.S.C. 171.

A. General Principle Governing Compliance With the “Article of Manufacture” Requirement Computer-generated icons, such as full screen displays and individual icons, are 2-dimensional images which alone are surface ornamentation. See, e.g., Ex parte Strijland, 26 USPQ2d 1259 (Bd. Pat. App. & Int. 1992) (computer-generated icon alone is merely surface ornamentation). The USPTO considers designs for computer-generated icons embodied in articles of manufacture to be statutory subject matter eligible for design patent protection under 35 U.S.C. 171. Thus, if an application claims a computer-generated icon shown on a computer screen, monitor, other display panel, or a portion thereof, the claim complies with the “article of manufacture” requirement of 35 U.S.C. 171. Since a patentable design is inseparable from the object to which it is applied and cannot exist alone merely as a scheme of surface ornamentation, a computer-generated icon must be embodied in a computer screen, monitor, other display panel, or portion thereof, to satisfy 35 U.S.C. 171. See MPEP § 1502.

"We do not see that the dependence of the existence of a design on something outside itself is a reason for holding it is not a design 'for an article of manufacture.'"

In re Hruby, 373 F.2d 997, 1001, 153 USPQ 

61, 66 (CCPA 1967) (design of water fountain patentable design for an article of manufacture). The dependence of a computer-generated icon on a central processing unit and computer program for its existence itself is not a reason for holding that the design is not for an article of manufacture.

B.Procedures for Evaluating Whether Design Patent Applications Drawn to Computer- Generated Icons Comply With the “Article of Manufacture” Requirement

USPTO personnel shall adhere to the following procedures when reviewing design patent applications drawn to computer-generated icons for compliance with the “article of manufacture” requirement of 35 U.S.C. 171.

(A)Read the entire disclosure to determine what the applicant claims as the design and to determine whether the design is embodied in an article of manufacture. 37 CFR 1.71 and 1.152-1.154.

Since the claim must be in formal terms to the design “as shown, or as shown and described,” the drawing provides the best description of the claim. 37 CFR 1.153.

(1)Review the drawing to determine whether a computer screen, monitor, other display panel, or portion thereof, is shown. 37 CFR 1.152.

Although a computer-generated icon may be embodied in only a portion of a computer screen, monitor, or other display panel, the drawing “must contain a sufficient number of views to constitute a complete disclosure of the appearance of the article.” 37 CFR 1.152. In addition, the drawing must comply with 37 CFR 1.84.

(2)Review the title to determine whether it clearly describes the claimed subject matter. 37 CFR 1.153.

The following titles do not adequately describe a design for an article of manufacture under 35 U.S.C. 171: “computer icon”; or “icon.” On the other hand, the following titles do adequately describe a design for an article of manufacture under 35 U.S.C. 171: “computer screen with an icon”; “display panel with a computer icon”; “portion of a computer screen with an icon image”; “portion of a display panel with a computer icon image”; or “portion of a monitor displayed with a computer icon image.”

(3)Review the specification to determine whether a characteristic feature statement is present. 37 CFR 1.71. If a characteristic feature statement is present, determine whether it describes the claimed subject matter as a computer-generated icon embodied in a computer screen, monitor, other display panel, or portion thereof. See McGrady v. Aspenglas Corp., 487 F.2d 859, 208 USPQ 242 (S.D.N.Y. 1980) (descriptive statement in design patent application narrows claim scope).

(B)If the drawing does not depict a computer- generated icon embodied in a computer screen, monitor, other display panel, or a portion thereof, in either solid or broken lines, reject the claimed design under 35 U.S.C. 171 for failing to comply with the article of manufacture requirement.

(1)If the disclosure as a whole does not suggest or describe the claimed subject matter as a computer- generated icon embodied in a computer screen, monitor, other display panel, or portion thereof, indicate that:

(a)The claim is fatally defective under 35 U.S.C. 171; and

(b)Amendments to the written description, drawings and/or claim attempting to overcome the rejection will ordinarily be entered, however, any new matter will be required to be canceled from the written description, drawings and/or claims. If new matter is added, the claim should be rejected under 35 U.S.C. 112, first paragraph.

(2)If the disclosure as a whole suggests or describes the claimed subject matter as a computer- generated icon embodied in a computer screen, monitor, other display panel, or portion thereof, indicate that the drawing may be amended to overcome the rejection under 35 U.S.C. 171. Suggest amendments which would bring the claim into compliance with 35 U.S.C. 171.

(C)Indicate all objections to the disclosure for failure to comply with the formal requirements of the Rules of Practice in Patent Cases. 37 CFR 1.71, 1.81- 1.85, and 1.152-1.154. Suggest amendments which would bring the disclosure into compliance with the formal requirements of the Rules of Practice in Patent Cases.

(D)Upon reply by applicant:

(1)Enter any amendments; and

(2)Review all arguments and the entire record, including any amendments, to determine whether the drawing, title, and specification clearly disclose a computer-generated icon embodied in a computer screen, monitor, other display panel, or portion thereof.

(E)If, by a preponderance of the evidence (see In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992) (“After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument.”)), the applicant has established that the computer-generated icon is embodied in a computer screen, monitor, other display panel, or portion thereof, withdraw the rejection under 35 U.S.C. 171.

II.EFFECT OF THE GUIDELINES ON PENDING DESIGN APPLICATIONS DRAWN TO COMPUTER-GENERATED ICONS

USPTO personnel shall follow the procedures set forth above when examining design patent applications for computer-generated icons pending in the USPTO as of April 19, 1996.

III.TREATMENT OF TYPE FONTS

Traditionally, type fonts have been generated by solid blocks from which each letter or symbol was produced. Consequently, the USPTO has historically granted design patents drawn to type fonts. USPTO personnel should not reject claims for type fonts under 35 U.S.C. 171 for failure to comply with the “article of manufacture” requirement on the basis that more modern methods of typesetting, including computer- generation, do not require solid printing blocks.

IV.CHANGEABLE COMPUTER GENERATED ICONS

Computer generated icons including images that change in appearance during viewing may be the subject of a design claim. Such a claim may be shown in two or more views. The images are understood as viewed sequentially, no ornamental aspects are attributed to the process or period in which one image changes into another. A descriptive statement must be included in the specification describing the transitional nature of the design and making it clear that the scope of the claim does not include anything that is not shown. Examples of such a descriptive statement are as follows:

“The subject matter in this patent includes a process or period in which an image changes into another image. This process or period forms no part of the claimed design;” or

“The appearance of the transitional image sequentially transitions between the images shown in Figs. 1- 8. The process or period in which one image transitions to another image forms no part of the claimed design;” or

“The appearance of the transitional image sequentially transitions between the images shown in Figs. 1- 8. No ornamental aspects are associated with the process or period in which one image transitions to another image.”

1504.01(b) Design Comprising Multiple Articles or Multiple Parts Embodied in a Single Article

While the claimed design must be embodied in an article of manufacture as required by 35 U.S.C. 171, it may encompass multiple articles or multiple parts within that article. Ex parte Gibson, 20 USPQ 249 (Bd. App. 1933). When the design involves multiple articles, the title must identify a single entity of manufacture made up by the parts (e.g., set, pair, combination, unit, assembly). A descriptive statement should be included in the specification making it clear that the claim is directed to the collective appearance of the articles shown. If the separate parts are shown in a single view, the parts must be shown embraced by a bracket “}”. The claim may also involve multiple parts of a single article, where the article is shown in broken lines and various parts are shown in solid lines. In this case, no bracket is needed. See MPEP § 1503.01.

1504.01(c) Lack of Ornamentality

I. FUNCTIONALITY VS. ORNAMENTALITY

An ornamental feature or design has been defined as one which was “created for the purpose of ornamenting” and cannot be the result or “merely a by- product” of functional or mechanical considerations. In re Carletti, 328 F.2d 1020, 140 USPQ 653, 654 (CCPA 1964); Blisscraft of Hollywood v. United Plastic Co., 189 F. Supp. 333, 337, 127 USPQ 452, 454 (S.D.N.Y. 1960), aff’d, 294 F.2d 694, 131 USPQ 55 (2d Cir. 1961). It is clear that the ornamentality of the article must be the result of a conscious act by the inventor, as 35 U.S.C. 171 requires that a patent for a design be given only to “whoever invents any new, original, and ornamental design for an article of manufacture.” Therefore, for a design to be ornamental within the requirements of 35 U.S.C. 171, it must be “created for the purpose of ornamenting.” In re Carletti, 328 F.2d 1020, 1022, 140 USPQ 653, 654 (CCPA 1964).

To be patentable, a design must be “primarily ornamental.” “In determining whether a design is primarily functional or primarily ornamental the claimed design is viewed in its entirety, for the ultimate question is not the functional or decorative aspect of each separate feature, but the overall appearance of the article, in determining whether the claimed design is dictated by the utilitarian purpose of the article.” L. A. Gear Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123, 25 USPQ2d 1913, 1917 (Fed. Cir. 1993). The court in Norco Products, Inc. v. Mecca Development, Inc., 617 F.Supp. 1079, 1080, 227 USPQ 724, 725 (D. Conn. 1985), held that a “primarily functional invention is not patentable” as a design.

A determination of ornamentality is not a quantitative analysis based on the size of the ornamental feature or features but rather a determination based on their ornamental contribution to the design as a whole.

While ornamentality must be based on the entire design, “[i]n determining whether a design is primarily functional, the purposes of the particular elements of the design necessarily must be considered.” Power Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234, 240, 231 USPQ 774, 778 (Fed. Cir. 1986). The court in Smith v. M & B Sales & Manufacturing, 13 USPQ2d 2002, 2004 (N. D. Cal. 1990), states that if “significant decisions about how to put it [the item] together and present it in the marketplace were informed by primarily ornamental considerations”, this information may establish the ornamentality of a design.

“However, a distinction exists between the functionality of an article or features thereof and the functionality of the particular design of such article or features thereof that perform a function.” Avia Group International Inc. v. L. A. Gear California Inc., 853 F.2d 1557, 1563, 7 USPQ2d 1548, 1553 (Fed. Cir. 1988). The distinction must be maintained between the ornamental design and the article in which the design is embodied. The design for the article cannot be assumed to lack ornamentality merely because the article of manufacture would seem to be primarily functional.

II.ESTABLISHING A PRIMA FACIE BASIS FOR REJECTIONS UNDER 35 U.S.C. 171

To properly reject a claimed design under 35 U.S.C. 171 on the basis of a lack of ornamentality, an examiner must make a prima facie showing that the claimed design lacks ornamentality and provide a sufficient evidentiary basis for factual assumptions relied upon in such showing. The court in In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992), stated that “the examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.”

The proper evidentiary basis for a rejection under 35 U.S.C. 171 that a claim is lacking in ornamentality is an evaluation of the appearance of the design itself. The examiner’s knowledge of the art, a reply to a letter of inquiry, a brochure emphasizing the functional/ mechanical features of the design, the specification of an analogous utility patent (the applicant’s or another inventor), or information provided in the specification may be used to supplement the analysis of the design. If a design is embodied in a specific mechanical article, the analysis that the design lacks ornamentality because its appearance is dictated by functional requirements should be supported by reference to utility patents or some other source of information about the function of the design. If the design is embodied in an article that has a more general use, such as a clip, the analysis and explanation as to why the design lacks ornamentality should be detailed and specific. The examiner’s contention that the specific appearance of the claimed design lacks ornamentality may be supported by the holding of the court in In re Carletti et al., 328 F.2d 1020, 140 USPQ 653 (CCPA 1964), that a design to be patentable must be “created for the purpose of ornamenting” the article in which it is embodied. The presence or lack of ornamentality must be made on a case by case basis.

Knowledge that the article would be hidden during its end use based on the examiner’s experience in a given art or information that may have been submitted in the application itself would not be considered prima facie evidence of the functional nature of the design. See Seiko Epson Corp v. Nu-Kote Int’l Inc., 190 F.3d 1360, 52 USPQ2d 1011 (Fed. Cir. 1999). “Visibility during an article’s ‘normal use’ is not a statutory requirement of §171, but rather a guideline for courts to employ in determining whether the patented features are ‘ornamental’.” Larson v. Classic Corp., 683 F. Supp. 1202, 7 USPQ2d 1747 (N.D. Ill. 1988). If there is sufficient evidence to show that a specific design “is clearly intended to be noticed during the process of sale and equally clearly intended to be completely hidden from view in the final use,” it is not necessary that a rejection be made under 35 U.S.C. 171. In re Webb, 916 F.2d 1553, 1558, 16 USPQ2d 1433, 1436 (Fed. Cir. 1990). The mere fact that an article would be hidden during its ultimate end use is not the basis for a rejection under 35 U.S.C. 171, but this information provides additional evidence to be used in support of the contention that the design lacks ornamentality. The only basis for rejecting a claim under 35 U.S.C. 171 as lacking in ornamentality is an evaluation of the design itself in light of additional information, such as that identified above.

Examples of proper evidentiary basis for a rejection under 35 U.S.C. 171 that a claim is lacking in ornamentality would be: (A) common knowledge in the art; (B) the appearance of the design itself; (C) the specification of a related utility patent; or (D) information provided in the specification.

A rejection under 35 U.S.C. 171 for lack of ornamentality must be supported by evidence and rejections should not be made in the absence of such evidence.

III.REJECTIONS MADE UNDER 35 U.S.C. 171

Rejections under 35 U.S.C. 171 for lack of ornamentality based on a proper prima facie showing fall into two categories:

(A)a design visible in its ultimate end use which is primarily functional based on the evidence of record; or

(B)a design not visible in its normal and intended use as evidence that its appearance is not a matter of concern. In re Stevens, 173 F.2d 1015, 81 USPQ 362 (CCPA 1949); In re Webb, 916 F.2d 1553, 1558, 16 USPQ2d 1433, 1436 (Fed. Cir. 1990).

When the examiner has established a proper prima facie case of lack of ornamentality, “the burden of coming forward with evidence or argument shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). A rejection under 35 U.S.C. 171 for lack of ornamentality may be overcome by providing evidence from the inventor himself or a representative of the company that commissioned the design that there was an intent to create a design for the “purpose of ornamenting.” In re Carletti, 328 F.2d 1020, 1022, 140 USPQ 653, 654 (CCPA 1964). Attorney’s arguments are not a substitute for evidence. Once a proper prima faciecase of lack of ornamentality is established by the examiner, it is incumbent upon applicant to come forth with countervailing evidence to rebut the rejection made by the examiner. Ex parte Webb, 30 USPQ2d 1064, 1067-68 (Bd. Pat. App. & Int. 1993).

IV. OVERCOMING A 35 U.S.C. 171 REJECTION BASED ON LACK OF ORNAMENTALITY

A rejection under 35 U.S.C. 171 based on lack of ornamentality may be overcome by the following:

(A)An affidavit or declaration under 37 CFR 1.132 submitted from the applicant or a representative of the company, which commissioned the design, explaining specifically and in depth, which features or area of the claimed design were created with:

(1)a concern for enhancing the saleable value or increasing the demand for the article. Gorham Manufacturing Co. v. White, 81 U.S. (14 Wall) 511 (1871), or

(2)a concern primarily for the esthetic appearance of the article;

(B)Advertisements which emphasize the ornamentality of the article embodying the claimed design may be submitted as evidence to rebut the rejection. See Berry Sterling Corp. v. Pescor Plastics Inc., 122 F.3d 1452, 43 USPQ2d 1953 (Fed. Cir. 1997);

(C)Evidence that the appearance of the design is ornamental may be shown by distinctness from the prior art as well as an attempt to develop or to maintain consumer recognition of the article embodying the design. Seiko Epson Corp. v. Nu-Kote Int’l Inc., 190 F.3d 1360, 52 USPQ2d 1011 (Fed. Cir. 1999);

(D)Evidence may be provided by a representative of the company, which commissioned the design, to establish the ornamentality of the design by stating the motivating factors behind the creation of the design;

(E)When the rejection asserts that the design is purely dictated by functional considerations, evidence may be presented showing possible alternative designs which could have served the same function indicating that the appearance of the claimed design was not purely dictated by function. L.A. Gear Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 25 USPQ2d 1913 (Fed. Cir. 1993);

(F)When the rejection asserts no period in the commercial life of the article when its ornamentality may be a matter of concern, the applicant must establish that the “article’s design is a ‘matter of concern’ because of the nature of its visibility at some point between its manufacture or assembly and its ultimate use.” In re Webb, 916 F.2d 1553, 1558, 16 USPQ2d 1433, 1436 (Fed. Cir. 1990).

Attorney arguments are not a substitute for evidence to establish the ornamentality of the claim. Ex parte Webb, 30 USPQ2d 1064, 1068 (Bd. Pat. App. & Inter. 1993).

V. EVALUATION OF EVIDENCE SUBMITTED TO OVERCOME A REJECTION UNDER 35 U.S.C. 171

In order to overcome a rejection of the claim under 35 U.S.C. 171 as lacking in ornamentality, applicant must provide evidence that he or she created the design claimed for the “purpose of ornamenting” as required by the court in In re Carletti, 328 F.2d 1020, 1022, 140 USPQ 653, 654 (CCPA 1964).

The mere display of the article embodying the design at trade shows or its inclusion in catalogs is insufficient to establish ornamentality. Ex parte Webb, 30 USPQ2d 1064 (Bd. Pat. App. & Inter. 1993). There must be some clear and specific indication of the ornamentality of the design in this evidence for it to be given probative weight in overcoming the prima facie lack of ornamentality. Berry Sterling Corp. v. Pescor Plastics Inc., 122 F.3d 1452, 43 USPQ2d 1953 (Fed. Cir. 1997).

The examiner must evaluate evidence submitted by the applicant in light of the design as a whole to decide if the claim is primarily ornamental. It is important to be aware that this determination is not based on the size or amount of the features identified as ornamental but rather on their influence on the overall appearance of the design.

In a rejection of a claim under 35 U.S.C. 171 in which some of the evidentiary basis for the rejection is that the design would be hidden during its end use, the applicant must establish that the “article’s design is a ‘matter of concern’ because of the nature of its visibility at some point between its manufacture or assembly and its ultimate use.” In re Webb, 916 F.2d 1553, 1558, 16 USPQ2d 1433, 1436 (Fed. Cir. 1990). This concern may be shown by the submission of evidence that the appearance of the article was of concern during its period of commercial life by declarations from prospective/actual customers/users attesting that the ornamentality of the article was of concern to them. Unless applicant is directly involved with the sale of the design or works with users of the design, he or she cannot provide factual evidence as to the reasons for the purchase/selection of the article embodying the design.

Once applicant has proven that there is a period of visibility during which the ornamentality of the design is a “matter of concern,” it is then necessary to determine whether the claimed design was primarily ornamental during that period. Larson v. Classic Corp., 683 F. Supp. 1202, 7 USPQ2d 1747 (N. D. Ill. 1988). The fact that a design would be visible during its commercial life is not sufficient evidence that the design was “created for the purpose of ornamenting” as required by the court in In re Carletti, 328 F.2d 1020, 1022, 140 USPQ 653, 654 (CCPA 1964). Examiners should follow the standard for determining ornamentality as outlined above.

“The possibility of encasing a heretofore concealed design element in a transparent cover for no reason other than to avoid this rule cannot avoid the visibility [guideline]... , lest it become meaningless.” Norco Products Inc. v. Mecca Development Inc., 617 F. Supp. 1079, 1081, 227 USPQ 724, 726 (D. Conn. 1985). Applicant cannot rely on mere possibilities to provide factual evidence of ornamentality for the claimed design.

The requirements for visibility of the design andthat it was created for the “purpose of ornamenting” must be met for a rejection under 35 U.S.C. 171 to be overcome if the design would be hidden during its end use.

1504.01(d) Simulation

35 U.S.C. 171 requires that a design to be patentable be “original.” Clearly, a design which simulates an existing object or person is not original as required by the statute. The Supreme Court in Gorham Manufacturing Co. v. White, 81 U.S. (14 Wall) 511 (1871), described a design as “the thing invented or produced, for which a patent is given.” “The arbitrary chance selection of a form of a now well known and celebrated building, to be applied to toys, inkstands, paper - weights, etc. does not, in my opinion, evince the slightest exercise of invention....” Bennage v. Phillippi, 1876 C.D. 135, 9 O.G. 1159 (Comm’r Pat. 1876). This logic was reinforced by the CCPA in In re Smith, 25 USPQ 359, 360, 1935 C.D. 565, 566 (CCPA 1935), which stated that “to take a natural form, in a natural pose, ... does not constitute invention” when affirming the rejection of a claim to a baby doll. This premise was also applied in In re Smith, 25 USPQ 360, 362, 1935 C.D. 573, 575 (CCPA 1935), which held that a “baby doll simulating the natural features...of a baby without embodying some grotesqueness or departure from the natural form” is not patentable.

Therefore, a claim directed to a design for an article which simulates a well known or naturally occurring object or person should be rejected under 35 U.S.C. 171 as nonstatutory subject matter in that the claimed design lacks originality. Form paragraph 15.08.02should be used. However, when a claim is rejected on this basis, examiners should provide evidence, if possible, of the appearance of the object, person or naturally occurring form in question so that a comparison may be made to the claimed design. Form paragraph 15.08.03 should be used. It would also be appropriate, if the examiner has prior art which anticipates or renders the claim obvious, to reject the claim under either 35 U.S.C. 102 or 103(a) concurrently. In re Wise, 340 F.2d 982, 144 USPQ 354 (CCPA 1965).

1504.01(e) Offensive Subject Matter

Design applications which disclose subject matter which could be deemed offensive to any race, religion, sex, ethnic group, or nationality, such as those which include caricatures or depictions, should be rejected as nonstatutory subject matter under 35 U.S.C. 171. See also MPEP § 608.

1504.02 Novelty

The standard for determining novelty under 35 U.S.C. 102 was set forth by the court in In re Bartlett, 300 F.2d 942, 133 USPQ 204 (CCPA 1962). “The degree of difference [from the prior art] required to establish novelty occurs when the average observer takes the new design for a different, and not a modified, already-existing design.” 300 F.2d at 943, 133 USPQ at 205 (quoting Shoemaker, Patents For Designs, page 76). In design patent applications, the factual inquiry in determining anticipation over a prior art reference is the same as in utility patent applications. That is, the reference “must be identical in all material respects.” Hupp v. Siroflex of America Inc., 122 F.3d 1456, 43 USPQ2d 1887 (Fed. Cir. 1997).

The “average observer” test does not require that the claimed design and the prior art be from analogous arts when evaluating novelty. In re Glavas, 230 F.2d 447, 450, 109 USPQ 50, 52 (CCPA 1956). Insofar as the “average observer” under 35 U.S.C. 102is not charged with knowledge of any art, the issue of analogousness of prior art need not be raised. This distinguishes 35 U.S.C. 102 from 35 U.S.C. 103(a) which requires determination of whether the claimed design would have been obvious to “a person of ordinary skill in the art.”

When a claim is rejected under 35 U.S.C. 102 as being unpatentable over prior art, those features of the design which are functional and/or hidden during end use may not be relied upon to support patentability. In re Cornwall, 230 F.2d 447, 109 USPQ 57 (CCPA 1956); Jones v. Progress Ind. Inc., 119 USPQ 92 (D. R.I. 1958). Further, in a rejection of a claim under 35 U.S.C. 102, mere differences in functional considerations do not negate a finding of anticipation when determining design patentability. Black & Decker, Inc. v. Pittway Corp., 636 F.2d 1193, 231 USPQ 252 (N.D. Ill. 1986).

It is not necessary for the examiner to cite or apply prior art to show that functional and/or hidden features are old in the art as long as the examiner has properly relied on evidence to support the prima facielack of ornamentality of these individual features. If applicant wishes to rely on functional or hidden features as a basis for patentability, the same standard for establishing ornamentality under 35 U.S.C. 171 must be applied before these features can be given any patentable weight. See MPEP § 1504.01(c).

In evaluating a statutory bar based on 35 U.S.C. 102(b), the experimental use exception to a statutory bar for public use or sale (see MPEP § 2133.03(e)) does not usually apply for design patents. See In re Mann, 861 F.2d 1581, 8 USPQ2d 2030 (Fed. Cir. 1988). However, Tone Brothers, Inc. v. Sysco Corp., 28 F.3d 1192, 1200, 31 USPQ2d 1321, 1326 (Fed. Cir. 1994) held that “experimentation directed to functional features of a product also containing an ornamental design may negate what otherwise would be considered a public use within the meaning of section 102(b).” See MPEP § 2133.03(e)(6).

Registration of a design abroad is considered to be equivalent to patenting under 35 U.S.C. 119(a)-(d) and 35 U.S.C. 102(d), whether or not the foreign grant is published. (See Ex parte Lancaster, 151 USPQ 713 (Bd. App. 1965); Ex parte Marinissen, 155 USPQ 528 (Bd. App. 1966); Appeal No. 239-48, Decided April 30, 1965, 151 USPQ 711, (Bd. App. 1965); Ex parte Appeal decided September 3, 1968, 866 O.G. 16 (Bd. App. 1966). The basis of this practice is that if the foreign applicant has received the protection offered in the foreign country, no matter what the protection is called (“patent,” “Design Registration,” etc.), if the United States application is timely filed, a claim for priority will vest. If, on the other hand, the U.S. application is not timely filed, a statutory bar arises under 35 U.S.C. 102(d) as modified by 35 U.S.C. 172. In order for the filing to be timely for priority purposes and to avoid possible statutory bars, the U.S. design patent application must be made within 6 months of the foreign filing. See also MPEP § 1504.10.

The laws of each foreign country vary in one or more respects.

Rejections under 35 U.S.C. 102(d) as modified by 35 U.S.C. 172 should only be made when the examiner knows that the application for foreign registration/ patent has actually issued before the U. S. filing date based on an application filed more than six (6) months prior to filing the application in the United States.

1504.03 Nonobviousness

A claimed design that meets the test of novelty must additionally be evaluated for nonobviousness under 35 U.S.C. 103(a).

I.GATHERING THE FACTS

The basic factual inquiries guiding the evaluation of obviousness, as outlined by the Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), are applicable to the evaluation of design patentability:

(A)Determining the scope and content of the prior art;

(B)Ascertaining the differences between the claimed invention and the prior art;

(C)Resolving the level of ordinary skill in the art; and

(D)Evaluating any objective evidence of nonobviousness (i.e., so-called “secondary considerations”).

A.Scope of the Prior Art

The scope of the relevant prior art for purposes of evaluating obviousness under 35 U.S.C. 103(a) extends to all “analogous arts.”

While the determination of whether arts are analogous is basically the same for both design and utility inventions (see MPEP § 904.01(c) and § 2141.01(a)), In re Glavas, 230 F.2d 447, 450 109 USPQ 50, 52 (CCPA 1956) provides specific guidance for evaluating analogous arts in the design context, which should be used to supplement the general requirements for analogous art as follows:

The question in design cases is not whether the references sought to be combined are in analogous arts in the mechanical sense, but whether they are so related that the appearance of certain ornamental features in one would suggest the application of those features to the other.

Thus, if the problem is merely one of giving an attractive appearance to a surface, it is immaterial whether the surface in question is that of wall paper, an oven door, or a piece of crockery. . . .

On the other hand, when the proposed combination of references involves material modifications of the basic form of one article in view of another, the nature of the article involved is a definite factor in determining whether the proposed change involves [patentable] invention.

Therefore, where the differences between the claimed design and the prior art are limited to the application of ornamentation to the surface of an article, any prior art reference which discloses substantially the same surface ornamentation would be considered analogous art. Where the differences are in the shape or form of the article, the nature of the articles involved must also be considered.

B.Differences Between the Prior Art and the Claimed Design

In determining patentability under 35 U.S.C. 103(a), it is the overall appearance of the design that must be considered. In re Leslie, 547 F.2d 116, 192 USPQ 427 (CCPA 1977). The mere fact that there are differences between a design and the prior art is not alone sufficient to justify patentability. In re Lamb, 286 F.2d 610, 128 USPQ 539 (CCPA 1961).

All differences between the claimed design and the closest prior art reference should be identified in any rejection of the design claim under 35 U.S.C. 103(a). If any differences are considered de minimis or inconsequential from a design viewpoint, the rejection should so state.

C.Level of Ordinary Skill in the Art

In order to be unpatentable, 35 U.S.C. 103(a) requires that an invention must have been obvious to a designer having “ordinary skill in the art” to which the subject matter sought to be patented pertains. The “level of ordinary skill in the art” from which obviousness of a design claim must be evaluated under 35 U.S.C. 103(a) has been held by the courts to be the perspective of the “designer of . . . articles of the types presented.” In re Nalbandian, 661 F.2d 1214, 1216, 211 USPQ 782, 784 (CCPA 1981); In re Carter, 673 F.2d 1378, 213 USPQ 625 (CCPA 1982).

D.Objective Evidence of Nonobviousness (Secondary Considerations)

Secondary considerations, such as commercial success and copying of the design by others, are relevant to the evaluation of obviousness of a design claim. Evidence of nonobviousness may be present at the time a prima facie case of obviousness is evaluated or it may be presented in rebuttal of a prior obviousness rejection.

II.PRIMA FACIE OBVIOUSNESS

Once the factual inquiries mandated under Graham v. John Deere Co., 383 U. S. 1, 148 USPQ 459 (1966), have been made, the examiner must determine whether they support a conclusion of prima facieobviousness. To establish prima facie obviousness, all the claim limitations must be taught or suggested by the prior art.

In determining prima facie obviousness, the proper standard is whether the design would have been obvious to a designer of ordinary skill with the claimed type of article. In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981).

As a whole, a design must be compared with something in existence, and not something brought into existence by selecting and combining features from prior art references. In re Jennings, 182 F.2d 207, 86 USPQ 68 (CCPA 1950). The “something in existence” referred to in Jennings has been defined as “...a reference... the design characteristics of which are basically the same as the claimed design....” In re Rosen, 673 F.2d 388, 391, 213 USPQ 347, 350 (CCPA 1982) (the primary reference did “...not give the same visual impression...” as the design claimed but had a “...different overall appearance and aesthetic appeal...”.) Hence, it is clear that “design characteristics” means overall visual appearance. This definition of “design characteristics” is reinforced in the decision of In re Harvey, 12 F.3d 1061, 1063, 29 USPQ2d 1206, 1208 (Fed. Cir. 1993), and is supported by the earlier decisions of In re Yardley, 493 F.2d 1389, 181 USPQ 331, 334 (CCPA 1974) and In re Leslie, 547 F.2d 116, 192 USPQ 427, 431 (CCPA 1977). Specifically, in the Yardley decision, it was stated that “[t]he basic consideration in determining the patentability of designs over prior art is similarity of appearance.” 493 F.2d at 1392-93, 181 USPQ at 334.

Therefore, in order to support a holding of obviousness, a primary reference must be more than a design concept; it must have an appearance substantially the same as the claimed design. In re Harvey, 12 F.3d 1061, 29 USPQ2d 1206 (Fed. Cir. 1993). Absent such a reference, no holding of obviousness under 35 U.S.C. 103(a) can be made, whether based on a single reference alone or in view of modifications suggested by secondary prior art.

A rejection under 35 U.S.C. 103(a) based on a single non-analogous reference would not be proper. The reason is that under 35 U.S.C. 103(a), a designer of ordinary skill would not be charged with knowledge of prior art that is not analogous to the claimed design.

Examiners are advised that differences between the claimed design and a primary reference may be held to be minor in nature and unrelated to the overall aesthetic appearance of the design with or without the support of secondary references. In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981). If such differences are shown by secondary references, they should be applied so as to leave no doubt that those differences would have been obvious to a designer of ordinary skill in the art. In re Sapp, 324 F.2d 1021, 139 USPQ 522 (CCPA 1963).

When a claim is rejected under 35 U.S.C. 103(a) as being unpatentable over prior art, features of the design which are functional and/or hidden during end use may not be relied upon to support patentability. “[A] design claim to be patentable must also be ornamental; and functional features or forms cannot be relied upon to support its patentability.” Jones v. Progress, Ind. Inc., 119 USPQ 92, 93 (D. R.I. 1958). “It is well settled that patentability of a design cannot be based on elements which are concealed in the normal use of the device to which the design is applied.” In re Cornwall, 230 F.2d 457, 459, 109 USPQ 57, 58 (CCPA 1956); In re Garbo, 287 F.2d 192, 129 USPQ 72 (CCPA 1961). It is not necessary that prior art be relied upon in a rejection under 35 U.S.C. 103(a) to show similar features to be functional and/or hidden in the art. However, examiners must provide evidence to support the prima facie functionality of such features. Furthermore, hidden portions or functional features cannot be relied upon as a basis for patentability. If applicant wishes to rely on functional or hidden features as a basis for patentability, then the same standard for establishing ornamentality under 35 U.S.C. 171 must be applied before these features can be given any patentable weight. See MPEP § 1504.01(c).

A.Combining Prior Art References

A rejection under 35 U.S.C. 103(a) would be appropriate if a designer of ordinary skill would have been motivated to modify a primary reference by deleting features thereof or by interchanging with or adding features from pertinent secondary references. In order for secondary references to be considered, there must be some suggestion in the prior art to modify the basic design with features from the secondary references. In re Borden, 90 F.3d 1570, 1572, 39 USPQ2d 1524, 1526 (Fed. Cir. 1996). The long- standing test for properly combining references has been “...whether they are so related that the appearance of certain ornamental features in one would suggest the application of those features to the other.” In re Glavas, 230 F.2d 447, 450, 109 USPQ 50, 52 (CCPA 1956).

The prohibition against destroying the function of the design is inherent in the logic behind combining references to render a claimed invention obvious under 35 U.S.C. 103(a). If the proposed combination of the references so alters the primary reference that its broad function can no longer be carried out, the combination of the prior art would not have been obvious to a designer of ordinary skill in the art. It is permissible to modify the primary reference to the extent that the specific function of the article may be affected while the broad function is not affected. For example, a primary reference to a cabinet design claimed as airtight could be modified to no longer be airtight so long as its function as a cabinet would not be impaired.

1.Analogous Art

When a modification to a primary reference involves a change in configuration, both the primary and secondary references must be from analogous arts. In re Glavas, 230 F.2d 447, 109 USPQ 50 (CCPA 1956).

Analogous art can be more broadly interpreted when applied to a claim that is directed to a design with a portion simulating a well known or naturally occurring object or person. The simulative nature of that portion of the design is prima facie evidence that art which simulates that portion would be within the level of ordinary skill under 35 U.S.C. 103(a).

2.Non-analogous Art

When modifying the surface of a primary reference so as to provide it with an attractive appearance, it is immaterial whether the secondary reference is analogous art, since the modification does not involve a change in configuration or structure and would not have destroyed the characteristics (appearance and function) of the primary reference. In re Glavas, 230 F.2d 447, 109 USPQ 50 (CCPA 1956).

III.REBUTTAL OF THE PRIMA FACIE CASE

Once a prima facie case of obviousness has been established, the burden shifts to the applicant to rebut it, if possible, with objective evidence of nonobviousness. Examples of secondary considerations are commercial success, expert testimony and copying of the design by others. Any objective evidence of nonobviousness or rebuttal evidence submitted by applicant, including affidavits or declarations under 37 CFR 1.132, must be considered by examiners in determining patentability under 35 U.S.C. 103(a).

When evidence of commercial success is submitted, examiners must evaluate it to determine whether there is objective evidence of success, and whether the success can be attributed to the ornamental design. Litton System, Inc. v. Whirlpool Corp., 728 F.2d 1423, 221 USPQ 97 (Fed. Cir. 1984); In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981). An affidavit or declaration under 37 CFR 1.132 has minimal evidentiary value on the issue of commercial success if there is no nexus or connection between the sales of the article in which the design is embodied and the ornamental features of the design. Avia Group Int’l Inc. v. L.A. Gear, 853 F.2d 1557, 7 USPQ2d 1548 (Fed. Cir. 1988).

Submission of expert testimony must establish the professional credentials of the person signing the affidavit or declaration, and should not express an opinion on the ultimate legal issue of obviousness since this conclusion is one of law. Avia Group Int’l Inc. v. L.A. Gear, 853 F.2d 1557, 7 USPQ2d 1548 (Fed. Cir. 1988); Panduit Corp. v. Dennison Mfg. Co., 774 F.2d 1082, 227 USPQ 337 (Fed. Cir. 1985).

With regard to evidence submitted showing that competitors in the marketplace are copying the design, more than the mere fact of copying is necessary to make that action significant because copying may be attributable to other factors such as lack of concern for patent property or indifference with regard to the patentee’s ability to enforce the patent. Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 226 USPQ 881 (Fed. Cir. 1985).

“A prima facie case of obviousness can be rebutted if the applicant...can show that the art in any material respect ‘taught away’ from the claimed invention...A reference may be said to teach away when a person of ordinary skill, upon reading the reference...would be led in a direction divergent from the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 58USPQ2d 1517 (Fed. Cir. 2001).

For additional information regarding the issue of objective evidence of nonobviousness, attention is directed to MPEP § 716 through § 716.06.

1504.04 Considerations Under 35 U.S.C. 112

The drawing in a design application is incorporated into the claim by use of the claim language “as shown.”

Additionally, the drawing disclosure can be supplemented by narrative description in the specification (see MPEP § 1503.01, subsection II). This description is incorporated into the claim by use of the language “as shown and described.” See MPEP § 1503.01, subsection III.

I.35 U.S.C. 112, FIRST AND SECOND PARAGRAPHS

Enablement and Scope of Protection

Any analysis for compliance with 35 U.S.C. 112should begin with a determination of whether the claims satisfy the requirements of the second paragraph before moving on to the first paragraph. See In re Moore, 439 F.2d 1232, 169 USPQ 236 (CCPA 1971). Therefore, before any determination can be made as to whether the disclosure meets the requirements of 35 U.S.C. 112, first paragraph, for enablement, a determination of the scope of protection sought by the claim must be made. However, since the drawing disclosure and any narrative description in the specification are incorporated into the claim by the use of the language “as shown and described,” any determination of the scope of protection sought by the claim is also a determination of the subject matter that must be enabled by the disclosure. Hence, if the appearance and shape or configuration of the design for which protection is sought cannot be determined or understood due to an inadequate visual disclosure, then the claim, which incorporates the visual disclosure, fails to particularly point out and distinctly claim the subject matter applicant regards as their invention, in violation of the second paragraph of 35 U.S.C. 112. Furthermore, such disclosure fails to enable a designer of ordinary skill in the art to make an article having the shape and appearance of the design for which protection is sought. In such case, a rejection of the claim under both the first and second paragraphs of 35 U.S.C. 112 would be warranted. An evaluation of the scope of the claim under 35 U.S.C 112, second paragraph, to determine whether the disclosure of the design meets the enablement requirement of 35 U.S.C. 112, first paragraph, cannot be based on the drawings alone. The scope of a claimed design is understood to be limited to those surfaces or portions of the article shown in the drawing in full lines in combination with any additional written description in the specification. The title does not define the scope of the claimed design but merely identifies the article in which it is embodied. See MPEP § 1503.01, subsection I. It is assumed that the claim has been crafted to protect that which the applicant “regards as his invention.” In re Zahn, 617 F.2d 261, 204 USPQ 988 (CCPA 1980). Therefore, when visible portions of the article embodying the design are not shown, it is because they form no part of the claim to be protected. It is prima facie evidence that the scope of the claimed design is limited to those surfaces “as shown” in the application drawing(s) in the absence of any additional written disclosure. See MPEP § 1503.01, subsection II. “[T]he adequacy of the disclosure must be determined by reference to the scope asserted.” Philco Corp. v. Admiral Corp., 199 F. Supp. 797, 131 USPQ 413, 418 (D. Del. 1961). However, it should be understood that when a surface or portion of an article is disclosed in full lines in the drawing it is considered part of the claimed design and its shape and appearance must be clearly and accurately depicted in order to satisfy the requirements of the first and second paragraphs of 35 U.S.C. 112.

Only those surfaces of the article that are visible at the point of sale or during use must be disclosed to meet the requirement of 35 U.S.C. 112, first and second paragraphs. “The drawing should illustrate the design as it will appear to purchasers and users, since the appearance is the only thing that lends patentability to it under the design law.” Ex parte Kohler, 1905 C.D. 192, 192, 116 O.G. 1185, 1185 (Comm’r Pat. 1905). The lack of disclosure of those surfaces of the article which are hidden during sale or use does not violate the requirements of the first and second paragraphs of 35 U.S.C. 112 because the “patented ornamental design has no use other than its visual appearance....” In re Harvey, 12 F.3d 1061, 1064, 29 USPQ2d 1206, 1208 (Fed. Cir. 1993). Therefore, to make the “visual appearance” of the design merely involves the reproduction of what is shown in the drawings; it is not necessary that the functionality of the article be reproduced as this is not claimed. The function of a design is “that its appearance adds attractiveness, and hence commercial value, to the article embodying it.” Ex parte Cady, 1916 C.D. 57, 61, 232 O.G. 619, 621 (Comm’r Pat. 1916).

The undisclosed surfaces not seen during sale or use are not required to be described in the specification even though the title of the design is directed to the complete article because the design is embodied only in those surfaces which are visible. Ex parte Salsbury, 38 USPQ 149, 1938 C.D. 6 (Comm’r Pat. 1938). While it is not necessary to show in the drawing those visible surfaces that are flat and devoid of surface ornamentation, they should be described in the specification by way of a descriptive statement if they are considered part of the claimed design. Ex parte Salsbury, 38 USPQ 149, 1938 C.D. 6 (Comm’r Pat. 1938). Such descriptive statement may not be used to describe visible surfaces which include structure that is clearly not flat. Philco Corp. v. Admiral Corp., 199 F. Supp. 797, 131 USPQ 413 (D. Del. 1961). See also MPEP § 1503.02.

Applications filed in which the title (in the claim) defines an entire article but the drawings and the specification fail to disclose portions or surfaces of the article that would be visible either during use or on sale, will not be considered to violate the requirements of the first and second paragraphs of 35 U.S.C. 112. Therefore, amendment to the title will not be required in such applications. However, examiners should include a statement in the first Office action on the merits (including a notice of allowability) indicating that the surface(s) or portion(s) of the article that would be normally visible but are not shown in the drawing or described in the specification are understood to form no part of the claimed design and therefore, the determination of patentability of the claimed design is based on the views of the article shown in the drawing and the description in the specification. Form paragraph 15.85 may be used for this purpose.

When a claim is rejected under 35 U.S.C. 112, first and second paragraphs, as nonenabling and indefinite due to an insufficient drawing disclosure, examiners must specifically identify in the Office action what the deficiencies are in the drawing. A mere statement that the claim is nonenabling and indefinite due to the poor quality of the drawing is not a sufficient explanation of the deficiencies in the drawing disclosure. Examiners must specifically point out those portions of the drawing that are insufficient to permit an understanding of the shape and appearance of the design claimed, and, if possible, suggest how the rejection may be overcome. Form paragraphs 15.21 and 15.20.02 may be used.

When inconsistencies between the views of the drawings are so great that the overall appearance of the design is unclear, the claim should be rejected under 35 U.S.C. 112, first and second paragraphs, as nonenabling and indefinite, and the rejection should specifically identify all of the inconsistencies between the views of the drawing. Otherwise, inconsistencies between drawing views will be objected to by the examiner and correction required by the applicant. See MPEP § 1503.02.

If the visual disclosure of the claimed design as originally filed is of such poor quality that its overall shape and appearance cannot be understood, applicant should be advised that the claim might be fatally defective by using form paragraph 15.65.

As indicated above, a narrative description in the specification can supplement the drawing disclosure to define the scope of protection sought by the claim. Furthermore, such description is incorporated into the claim by the use of the language “and described” therein. However, if a description in the specification refers to embodiments or modified forms not shown in the drawing, or includes vague and nondescriptive words such as “variations” and “equivalents,” or a statement indicating that the claimed design is not limited to the exact shape and appearance shown in the drawing, the claim should be rejected under 35 U.S.C. 112, first and second paragraphs, as nonenabling and indefinite. The reason being the description fails to enable a designer of ordinary skill in the art to make an article having the shape and appearance of those other embodiments, modified forms or “variations” and “equivalents” referred to in the description in the absence of additional drawing views. Furthermore, in the absence of additional drawing views, the description, which is incorporated into the claim, fails to particularly point out and distinctly claim the shape and appearance of those other embodiments, modified forms or “variations” and “equivalents” that applicants regard as their invention.

New Matter

New matter is subject matter which has no antecedent basis in the original specification, drawings or claim (MPEP § 608.04). An amendment to the claim must have antecedent basis in the original disclosure. 35 U.S.C. 132; 37 CFR 1.121(f). Prior to final action, all amendments will be entered in the application and will be considered by the examiner. Ex parte Hanback, 231 USPQ 739 (Bd. Pat. App. & Inter. 1986). An amendment to the claim which has no antecedent basis in the specification and/or drawings as originally filed introduces new matter because that subject matter is not described in the application as originally filed. The claim must be rejected under 35 U.S.C. 112, first paragraph. An amendment to the disclosure not affecting the claim (such as environment in the title or in broken lines in the drawings), which has no antecedent basis in the application as originally filed, must be objected to under 35 U.S.C. 132 as lacking support in the application as originally filed and a requirement must be made to cancel the new matter.

The scope of a design claim is defined by what is shown in full lines in the application drawings. In re Mann, 861 F.2d 1581, 8 USPQ2d 2030 (Fed. Cir. 1988). The claim may be amended by broadening or narrowing its scope within the bounds of the disclosure as originally filed.

A change in the configuration of the claimed design is considered a departure from the original disclosure and introduces prohibited new matter (37 CFR 1.121(f)). See In re Salmon, 705 F.2d 1579, 217 USPQ 981 (Fed. Cir. 1983). This includes the removal of three-dimensional surface treatment that is an integral part of the configuration of the claimed design, for example, beading, grooves, and ribs. The underlying configuration revealed by such an amendment would not be apparent in the application as filed and, therefore, it could not be established that applicant was in possession of this amended configuration at the time the application was filed. However, an amendment that changes the scope of a design by either reducing certain portions of the drawing to broken lines or converting broken line structure to solid lines is not a change in configuration as defined by the court in Salmon. The reason for this is because applicant was in possession of everything disclosed in the drawing at the time the application was filed and the mere reduction of certain portions to broken lines or conversion of broken line structure to solid lines is not a departure from the original disclosure. Examiners are cautioned that if broken line structure is converted to solid lines by way of amendment, the shape and configuration of that structure must have been fully disclosed and enabling at the time the application was filed. An amendment which alters the appearance of the claimed design by removing two-dimensional, superimposed surface treatment may be permitted if it is clear from the application that applicant had possession of the underlying configuration of the design without the surface treatment at the time of filing of the application. See In re Daniels, 144 F.3d 1452,

1456-57, 46 USPQ2d 1788, 1790 (Fed. Cir. 1998).

Amendments to the title must have antecedent basis in the original application to be permissible. If an amendment to the title directed to the article in which the design is embodied has no antecedent basis in the original application, the claim will be rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement thereof. Ex parte Strijland, 26 USPQ2d 1259 (Bd. Pat. App. & Inter. 1992). If an amendment to the title directed to the environment in which the design is used has no antecedent basis in the original application, it will be objected to under 35 U.S.C. 132 as introducing new matter into the disclosure. See MPEP §

1503.01, subsection I.

Examples of permissible amendments filed with the original application include: (A) a preliminary amendment filed simultaneously with the application papers, that is specifically identified in the original oath/declaration as required by 37 CFR 1.63 and MPEP § 608.04(b); and (B) the inclusion of a disclaimer in the original specification or on the drawings/photographs as filed. See 37 CFR 1.152 and MPEP § 1503.01 and § 1503.02.

An example of a permissible amendment submitted after the filing of the application would be an amendment that does not involve a departure from the configuration of the original disclosure (37 CFR 1.121(f)).

An example of an impermissible amendment which introduces new matter would be an amendment to the claim without antecedent basis in the original disclosure which would change the configuration or surface appearance of the original design by the addition of previously undisclosed subject matter. In re Berkman, 642 F.2d 427, 209 USPQ 45 (CCPA 1981).

When an amendment affecting the claim is submitted that introduces new matter into the drawing, specification or title and a rejection under 35 U.S.C. 112, first paragraph is made, the examiner should specifically identify in the Office action the subject matter which is not considered to be supported by the original disclosure. A statement by the examiner that merely generalizes that the amended drawing, specification or title contains new matter is not sufficient. Examiners should specifically identify the differences or changes made to the claimed design that are considered to introduce new matter into the original disclosure, and if possible, suggest how the amended drawing, specification or title can be corrected to overcome the rejection. Form paragraph 15.51 may be used.

If an amendment that introduces new matter into the claim is the result of a rejection under 35 U.S.C. 112, first and second paragraphs for lack of enablement and indefiniteness, and it is clear that the disclosure of the claimed design as originally filed cannot be corrected without the introduction of new matter, the record of the application should reflect that the claim is seen to be fatally defective.

III.35 U.S.C. 112, SECOND PARAGRAPH

Defects in claim language give rise to a rejection of the claim under the second paragraph of 35 U.S.C. 112. The fact that claim language, including terms of degree, may not be precise, does not automatically render the claim indefinite under 35 U.S.C. 112, second paragraph. “[T]he definiteness of the language employed must be analyzed – not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art.” In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). A claim may appear indefinite when read in a vacuum, but may be definite upon reviewing the application disclosure or prior art teachings. Moreover, an otherwise definite claim in a vacuum may be uncertain when reviewing the application disclosure and prior art. Moore, 439 F.2d at 1235 n.2, 169 USPQ at 238 n.2. See also MPEP § 2173.05(b).

Use of phrases in the claim such as “or similar article,” “or the like,” or equivalent terminology has been held to be indefinite. See Ex parte Pappas, 23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992). However, the use of broadening language such as “or the like,” or “or similar article” in the title when directed to the environment of the article embodying the design should not be the basis for a rejection under 35 U.S.C. 112, second paragraph. See MPEP § 1503.01, subsection I.

Examiners are reminded that there is no per se rule, and that the definiteness of claim language must be evaluated on the facts and circumstances of each application.

Rejections under 35 U.S.C. 112, second paragraph, should be made when the scope of protection sought by the claim cannot be determined from the disclosure. For instance, a drawing disclosure in which the boundaries between claimed (solid lines) and unclaimed (broken lines) portions of an article are not defined or cannot be understood may be enabling under 35 U.S.C. 112, first paragraph, in that the shape and appearance of the article can be reproduced, but such disclosure fails to particularly point out and distinctly claim the subject matter that applicant regards as the invention.

The claim should be rejected as indefinite when it cannot be determined from the designation of the design as shown in the drawing, referenced in the title and described in the specification what article of manufacture is being claimed, e.g., a design claimed as a “widget” which does not identify a known or recognizable article of manufacture.

1504.05 Restriction

General principles of utility restriction are set forth in Chapter 800 of the MPEP. These principles are also applicable to design restriction practice with the exception of those differences set forth in this section.

Unlike a utility patent application, which can contain plural claims directed to plural inventions, a design patent application may only have a single claim. More than one embodiment of a design may be protected by a single claim. However, such embodiments may be presented only if they involve a single inventive concept according to the obviousness- type double patenting practice for designs. In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Therefore, the examiner will require restriction in each design application which contains more than one patentably distinct design.

Restriction will be required under 35 U.S.C. 121 if a design patent application claims multiple designs that are patentably distinct from each other . The issue of whether a search and examination of an entire application can be made without serious burden to an examiner (as noted in MPEP § 803) is notapplicable to design applications when determining whether a restriction requirement should be made. Clear admission on the record by the applicant that the embodiments are not patentably distinct will not overcome a requirement for restriction if the embodiments do not meet the following two requirements: (A) the embodiments must have overall appearances with basically the same design characteristics; and (B) the differences between the embodiments must be insufficient to patentably distinguish one design from the other. Regarding the second requirement, without evidence, such an admission is merely a conclusionary statement. If multiple designs are held to be patentably indistinct and can be covered by a single claim, any rejection of one over prior art will apply equally to all. Ex parte Appeal No. 315-40, 152 USPQ 71 (Bd. App. 1965).

I.INDEPENDENT INVENTIONS

Design inventions are independent if there is no apparent relationship between two or more disparate articles disclosed in the drawings; for example, a pair of eyeglasses and a door handle; a bicycle and a camera; an automobile and a bathtub. Also note examples in MPEP § 806.06. Restriction in such cases is clearly proper. This situation may be rarely presented since design patent applications are seldom filed containing disclosures of independent articles.

II.DISTINCT INVENTIONS

In determining patentable distinctness, the examiner must compare the overall appearances of the multiple designs. Each design must be considered as a whole, i.e., the elements of the design are not considered individually as they may be when establishing a prima facie case of obviousness under 35 U.S.C. 103(a). Designs are not distinct inventions if: (A) the multiple designs have overall appearances with basically the same design characteristics; and (B) the differences between the multiple designs are insufficient to patentably distinguish one design from the other. Differences may be considered patentably insufficient when they are de minimis or obvious to a designer of ordinary skill in the art. Therefore, in determining the question of patentable distinctness under 35 U.S.C. 121 in a design application, a search of the prior art may be necessary. Both of the above considerations are important. Differences between the designs may prove to be obvious in view of the prior art, but if the overall appearances are not basically the same, the designs remain patentably distinct. Embodiments claiming different scopes of the same design can be patentably distinct using the two-step analysis above. When an application illustrates a component, which is a subcombination of another embodiment, the subcombination often has a distinct overall appearance and a restriction should be required. When an application illustrates only a portion of the design, which is the subject of another embodiment, that portion often has a distinct overall appearance and a restriction should be required.

A. Multiple Embodiments - Difference in Appearance

It is permissible to illustrate more than one embodiment of a design invention in a single application. However, such embodiments may be presented only if they involve a single inventive concept . Two designs involve a single inventive concept when the two designs are patentably indistinct according to the standard of obviousness-type double patenting. See In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). Embodiments that are patentably distinct over one another do not constitute a single inventive concept and thus may not be included in the same design application. In re Platner, 155 USPQ 222 (Comm’r Pat. 1967). The disclosure of plural embodiments does not require or justify more than a single claim, which claim must be in the formal terms stated in MPEP § 1503.01, subsection III. The specification should make clear that multiple embodiments are disclosed and should particularize the differences between the embodiments. If the disclosure of any embodiment relies on the disclosure of another embodiment for completeness to satisfy the requirements of 35 U.S.C. 112, first paragraph, the differences between the embodiments must be identified either in the figure descriptions or by way of a descriptive statement in the specification of the application as filed. For example, the second embodiment of a cabinet discloses a single view showing only the difference in the front door of the cabinet of the first embodiment; the figure description should state that this view “is a second embodiment of Figure 1, the only difference being the configuration of the door, it being understood that all other surfaces are the same as those of the first embodiment.” This type of statement in the description is understood to incorporate the disclosure of the first embodiment to complete the disclosure of the second embodiment. However, in the absence of such a statement in the specification of an application as filed, the disclosure of one embodiment will normally not be permitted to provide antecedent basis for any written or visual amendment to the disclosure of other embodiments.

The obviousness standard under 35 U.S.C. 103(a) must be applied in determining whether multiple embodiments may be retained in a single application. See MPEP § 1504.03. That is, it must first be determined whether the embodiments have overall appearances that are basically the same as each other. If the appearances of the embodiments are considered to be basically the same, then it must be determined whether the differences are either minor between the embodiments and not a patentable distinction, or obvious to a designer of ordinary skill in view of the analogous prior art . If embodiments meet both of the above criteria they may be retained in a single application. If embodiments do not meet either one of the above criteria, restriction must be required. It should be noted, that if the embodiments do not have overall appearances that are basically the same, restriction must be required since their appearances are patentably distinct. In such case it doesn’t matter for restriction purposes, if the differences between the appearances of the embodiments are shown to be obvious in view of analogous prior art.

B. Combination/Subcombination - Difference in Scope

A design claim covers the entire design as a whole. Furthermore, claim protection to the whole design does not extend to any individual part or portion thereof. See KeyStone Retaining Wall Systems Inc. v. Westrock Inc., 997 F.2d 1444, 27 USPQ2d 1297 (Fed. Cir. 1993). Embodiments directed to a design as a whole (combination) as well as individual parts or portions (subcombination) thereof may not be included in a single application if the appearances are patentably distinct. In such instance restriction would be required since patentably distinct combination/subcombination subject matter must be supported by separate claims. However, a design claim may cover embodiments of different scope directed to the same inventive concept within a single application if the designs are not patentably distinct. In re Rubinfield, 270 F.2d 391, 123 USPQ 210 (CCPA 1959). The court held that the inventive concept of a design is not limited to its embodiment in a single specific article, and as long as the various embodiments are not patentably distinct, they may be protected by a single claim. Blumcraft of Pittsburgh v. Ladd, 144 USPQ 562 (D.D.C. 1965). The determination that the design of the subcombination/element is patentably indistinct from the combination means that the designs are not patentable (novel and unobvious) over each other and may remain in the same application. If the embodiments are patentably distinct, the designs are considered to be separate inventions which require separate claims, and restriction to one or the other is necessary. See In re Kelly, 200 USPQ 560 (Comm’r Pat. 1978); Ex parte Sanford, 1914 C.D. 69, 204 O.G. 1346 (Comm’r Pat. 1914); Ex parte Heckman, 135 USPQ 229 (P.O. Super. Exam. 1960). In determining whether embodiments of different scope can be retained in a single application they must have overall appearances that are basically the same, and the difference in scope must be minor and not a patentable distinction. That is, they must, by themselves, be considered obvious over each other under 35 U.S.C. 103(a) without the aid of analogous prior art. The reason for this, as stated above, is because claim protection to the whole design does not extend to any individual part or portion thereof. Therefore, if the difference in scope between embodiments has an impact on the overall appearance that distinguishes one over the other, they must be restricted since the difference in scope creates patentably distinct designs that must be supported by separate claims.

III. TRAVERSAL OF RESTRICTION REQUIREMENT

If a response to a restriction requirement includes an election with traverse on the grounds that the groups are not patentably distinct, applicant must present evidence or identify such evidence of record showing the groups to be obvious variations of one another. Traversal of a restriction requirement alone without an explanation in support thereof will be treated as an election without traverse. See MPEP § 818.03(a) and form paragraph 8.25.02.

A traversal of a restriction requirement based on there being no serious burden to an examiner to search and examine an entire application (as noted in MPEP § 803) is not applicable to design patent applications. The fact that the embodiments may be searched together cannot preclude a requirement for restriction if their appearances are considered patentably distinct, since patentably distinct embodiments cannot be supported by a single formal design claim. Also, clear admission on the record by the applicant that the embodiments are not patentably distinct (as noted in MPEP § 809.02(a)) will not overcome a requirement for restriction if the embodiments do not have overall appearances that are basically the same as each other.

When a traversal specifically points out the supposed errors in a restriction, examiners must reevaluate the requirement in view of these remarks. If the restriction requirement is to be maintained, it must be repeated and made final in the next Office action and the arguments answered. See MPEP § 821.01. No application should be allowed on the next Office action where a response to a restriction requirement includes an election with traverse, unless the traversal is withdrawn in view of a telephone interview, or the examiner withdraws the restriction requirement.

1504.06 Double Patenting

There are generally two types of double patenting rejections. One is the “same invention” type double patenting rejection based on 35 U.S.C. 171 which states in the singular that an inventor “may obtain a patent.” The second is the “nonstatutory-type” double patenting rejection based on a judicially created doctrine grounded in public policy and which is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinct from claims in a first patent. Nonstatutory double patenting includes rejections based on one- way determination of obviousness, and two-way determination of obviousness.

The charts in MPEP § 804 outline the procedure for handling all double patenting rejections.

Double patenting rejections are based on a comparison of the claims in a patent and an application or between two applications; the disclosure of the patent or application may be relied upon only to define the claim. 35 U.S.C. 171 specifically states that “a patent” may be obtained if certain conditions are met; this use of the singular makes it clear that only one patent may issue for a design.

Determining if a double patenting rejection is appropriate involves answering the following inquiries: Is the same design being claimed twice? If the answer is yes, then a rejection under 35 U.S.C. 171should be given on the grounds of “same invention” type double patenting. If not, are the designs directed to patentably indistinct variations of the same inventive concept? If the answer is yes, then a rejection based on the nonstatutory type double patenting should be given.

Double patenting rejections are based on a comparison of claims. While there is a direct correlation between the drawings in a design application and the claim, examiners must be aware that no such correlation is necessary in a utility application or patent. Several utility patents may issue with the identical drawing disclosure but with claims directed to different inventions. So any consideration of possible double patenting rejections between a utility application or patent with a design application cannot be based on the utility drawing disclosure alone. Anchor Hocking Corp. v. Eyelet Specialty Co., 377 F. Supp. 98, 183 USPQ 87 (D. Del. 1974). The examiner must be able to recreate the design claimed from the utility claims without any reliance whatsoever on the drawings.

If a provisional double patenting rejection (of any type) is the only rejection remaining in two conflicting applications, the examiner should withdraw that rejection in one of the applications (e.g., the application with the earlier filing date) and permit the application to issue as a patent. The examiner should maintain the provisional double patenting rejection in the other application which rejection will be converted into a double patenting rejection when the first application issues as a patent. If more than two applications conflict with each other and one is allowed, the remaining applications should be cross rejected against the others as well as the allowed application. For this type of rejection to be appropriate, there must be either at least one inventor in common, or a common assignee. If the claims in copending design applications or a design patent and design applications have a common assignee but different inventive entities, rejections under 35 U.S.C. 102(e), (f) and (g)/ 103(a) must be considered in addition to the double patenting rejection. See MPEP § 804, § 2136, § 2137and § 2138.

I. "SAME INVENTION" DOUBLE PATENTING REJECTIONS

A design - design statutory double patenting rejection based on 35 U.S.C. 171 prevents the issuance of a second patent for a design already patented. For this type of double patenting rejection to be proper, identical designs with identical scope must be twice claimed. In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993). A design - utility “same invention” double patenting rejection is based on judicial doctrine as there is no statutory basis for this rejection because neither 35 U.S.C. 101 nor 35 U.S.C. 171 can be applied against both claims. In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969). The “same invention” type of double patenting rejection, whether statutory or nonstatutory, cannot be overcome by a terminal disclaimer. In re Swett, 145 F.2d 631, 172 USPQ 72 (CCPA 1971).

II. NONSTATUTORY DOUBLE PATENTING REJECTIONS

A rejection based on nonstatutory double patenting is based on a judicially created doctrine grounded in public policy so as to prevent the unjustified or improper timewise extension of the right to exclude granted by a patent. In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993).

A nonstatutory double patenting rejection of the obviousness-type applies to claims directed to the same inventive concept with different appearances or differing scope which are patentably indistinct from each other. Nonstatutory categories of double patenting rejections which are not the “same invention” type may be overcome by the submission of a terminal disclaimer.

In determining whether an obviousness-type double patenting rejection is appropriate, the examiner must compare the overall appearance of the claimed design in the application with the overall appearance of the claimed design in the conflicting application or patent. The claim in the patent or conflicting application must be considered as a whole, i.e., the elements of the claimed design of the reference are not considered individually as they may be when establishing a prima facie case of obviousness under 35 U.S.C. 103(a). After the factual inquiries mandated under Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), have been made, as with a rejection under 35 U.S.C. 103(a), the examiner must then determine whether the results of the inquiries support a conclusion of prima facie obviousness-type double patenting. To establish a prima facie case of obviousness-type double patenting: (A) the conflicting design claims must have overall appearances with basically the same design characteristics; and (B) the differences between the two designs must be insufficient to patentably distinguish one design from the other. Differences may be considered patentably insufficient when they are de minimis or obvious to a designer of ordinary skill in the art. While the conflicting application or patent (if less than a year older than the application) used to establish a prima faciecase of obviousness-type double patenting is not considered “prior art,” the principle involved is the same. In re Zickendraht, 319 F.2d 225, 138 USPQ 22 (CCPA 1963)(see concurring opinion of Judge Rich).

In determining whether to make an obviousness- type double patenting rejection between designs having differing scope, the examiner should compare the reference claim with the application claim. A rejection is appropriate if:

(A)The difference in scope is minor and patentably indistinct between the claims being compared;

(B)Patent protection for the design, fully disclosed in and covered by the claim of the reference, would be extended by the allowance of the claim in the later filed application; and

(C)No terminal disclaimer has been filed.

This kind of obviousness-type double patenting rejection in designs will occur between designs which may be characterized as a combination (narrow claim) and a subcombination/element thereof (broad claim). See discussion in MPEP § 1504.05, subsection II, B. If the designs are patentably indistinct and are directed to the same inventive concept the examiner must determine whether the subject matter of the narrower claim is fully disclosed in and covered by the broader claim of the reference. If the reference does not fully disclose the narrower claim, then a double patenting rejection should not be made. The additional disclosure necessary to establish that the applicant was in possession of the narrower claim at the time the broader claim was filed may be in a title or descriptive statement as well as in a broken line showing in the drawings. If the broader claim of the reference does not disclose the additional subject matter claimed in the narrower claim, then applicant could not have claimed the narrower claim at the time the application with the broader claim was filed and a rejection under nonstatutory double patenting would be inappropriate.

A nonstatutory double patenting rejection may be made between a patent and an application or provisionally between applications. Such rejection over a patent should only be given if the patent issued less than a year before the filing date of the application. If the patent is more than a year older than the application, the patent is considered to be “prior art” which may be applied in a rejection under 35 U.S.C. 102(b)/ 103(a). The purpose of a terminal disclaimer is to obviate a double patenting rejection by removing potential harm to the public by issuing a second patent. See MPEP § 804.

If the issue of double patenting is raised between a patent and a continuing application, examiners are reminded that this ground of rejection can only be made when the filing of the continuing application is voluntary and not the direct, unmodified result of restriction requirement under 35 U.S.C. 121. See MPEP § 804.01.

Examiners should particularly note that a design- design nonstatutory double patenting rejection does not always have to be made in both of the conflicting applications. For the most part, these rejections will be made in each of the conflicting applications; but, if the rejection is only appropriate in one direction, it is proper to reject only one application. The criteria for determining whether a one-way obviousness determination is necessary or a two-way obviousness determination is necessary is set forth in MPEP § 804. However, in design-utility situations, a two-way obviousness determination is necessary for the rejection to be proper. In re Dembiczak, 175 F.3d 994, 50 USPQ2d 1614 (Fed. Cir. 1999).

1504.10 Priority Under 35 U.S.C. 119(a)-(d)

The provisions of 35 U.S.C. 119(a)-(d) apply to design patent applications. However, in order to obtain the benefit of an earlier foreign filing date, the United States application must be filed within 6 months of the earliest date on which any foreign application for the same design was filed. Design applications may not make a claim for priority of a provisional application under 35 U.S.C. 119(e).

The United States will recognize claims for the right of priority under 35 U.S.C. 119(a)-(d) based on applications filed under such bilateral or multilateral treaties as the “Hague Agreement Concerning the International Deposit of Industrial Designs,” “Uniform Benelux Act on Designs and Models” and “European Community Design.” In filing a claim for priority of a foreign application previously filed under such a treaty, certain information must be supplied to the United States Patent and Trademark Office. In addition to the application number and the date of filing of the foreign application, the following information is required:

(A)the name of the treaty under which the application was filed,

(B)the name of at least one country other than the United States in which the application has the effect of, or is equivalent to, a regular national filing and

(C)the name and location of the national or inter- governmental authority which received the application.

¶ 15.02 Right of Priority Under 35 U.S.C. 119(b)

No application for design patent shall be entitled to the right of priority under 35 U.S.C. 119(b) unless a claim therefor and a certified copy of the original foreign application, specification and drawings upon which it is based are filed in the United States Patent and Trademark Office before the issue fee is paid, or at such time during the pendency of the application as required by the Director not earlier than six (6) months after the filing of the application in this country. Such certification shall be made by the Patent Office, or other proper authority of the foreign country in which filed, and show the date of the application and of the filing of the specification and other papers. The Director may require a translation of the papers filed if not in the English language, and such other information as deemed necessary.

The notation requirement on design patent application file wrappers when foreign priority is claimed is set forth in MPEP § 202.03.

¶ 15.04 Priority Under Bilateral or Multilateral Treaties

The United States will recognize claims for the right of priority under 35 U.S.C. 119(a)-(d) based on applications filed under such bilateral or multilateral treaties as the Hague Agreement Concerning the International Deposit of Industrial Designs, the Benelux Designs Convention and European Community Design. In filing a claim for priority of a foreign application previously filed under such a treaty, certain information must be supplied to the United States Patent and Trademark Office. In addition to the application number and the date of filing of the application, the following information is requested: (1) the name of the treaty under which the application was filed; (2) the name of at least one country other than the United States in which the application has the effect of, or is equivalent to, a regular national filing; and (3) the name and location of the national or international governmental authority which received such application.

Attention is also directed to the paragraphs dealing with the requirements where an actual model was originally filed in Germany (MPEP § 201.14(b)).

See MPEP Chapter 200 and 37 CFR 1.55 for further discussion of the practice and procedure under 35 U.S.C. 119(a)-(d).

1504.20 Benefit Under 35 U.S.C. 120

If applicant is entitled under 35 U.S.C. 120 to the benefit of an earlier U.S. filing date, the statement that, “This is a division [continuation] of design Application No.— — — —, filed — — —.” should appear in the first sentence of the specification. As set forth in 37 CFR 1.78(a)(2), the specification must contain or be amended to contain such a reference in the first sentence(s) following the title unless the reference is included in an application data sheet (37 CFR 1.76). The failure to timely submit such a reference is considered a waiver of any benefit under 35 U.S.C. 120.

For applications filed prior to September 21, 2004, in the absence of a statement in the application as originally filed incorporating by reference the disclosure of an earlier filed application, the disclosure in a continuing application may not be amended to conform to that of the earlier filed application for which priority is claimed. A mere statement that an application is a continuation or division of an earlier filed application is not an incorporation of anything into the application containing such reference for purposes of satisfying the disclosure requirements of 35 U.S.C. 112, first paragraph. In re de Seversky, 474 F.2d 671, 177 USPQ 144 (CCPA 1973). See also MPEP 608.01(p). For applications filed on or after September 21, 2004, 37 CFR 1.57(a) provides that a claim under 37 CFR 1.78 for the benefit of a prior-filed application, that was present on the filing date of the application, is considered an incorporation by reference as to inadvertently omitted material. See MPEP § 201.17.

When the first application is found to be fatally defective under 35 U.S.C. 112 because of insufficient disclosure to support an allowable claim and such position has been made of record by the examiner, a second design patent application filed as an alleged “continuation-in-part” of the first application to supply the deficiency is not entitled to the benefit of the earlier filing date. See Hunt Co. v. Mallinckrodt Chemical Works, 177 F.2d 583, 83 USPQ 277 (F2d Cir. 1949) and cases cited therein. Also, a design application filed as a “continuation-in-part” that changes the shape or configuration of a design disclosed in an earlier application is not entitled to the benefit of the filing date of the earlier application. See In re Salmon, 705 F.2d 1579, 217 USPQ 981 (Fed. Cir. 1983). However, a later filed application that changes the scope of a design claimed in an earlier filed application by reducing certain portions of the drawing to broken lines is not a change in configuration as defined by the court in Salmon. See MPEP § 1504.04, subsection II.

Unless the filing date of an earlier application is actually needed, for example, in the case of an interference or to avoid an intervening reference, there is no need for the examiner to make a determination in a continuation-in-part application as to whether the requirement of 35 U.S.C. 120 is met. Note the holdings in In re Corba, 212 USPQ 825 (Comm’r Pat. 1981).

Where a continuation-in-part application claims benefit under 35 U.S.C. 120 of the filing date of an earlier application, which in turn claims the priority under 35 U.S.C. 119(a)-(d) of a foreign application, and the conditions of 35 U.S.C. 120 are not met, a determination as to whether the foreign application for patent/registration has matured into a form of patent protection must be made. To determine the status of the foreign application, the charts in MPEP § 1504.02 should be used. If the foreign application for patent/registration has matured into a form of patent protection and would anticipate or render the claim in the alleged CIP application obvious, the design shown in the foreign application papers would qualify as prior art under 35 U.S.C. 102(d)/172 and the claim should be rejected under 35 U.S.C. 102/103. The claim for the benefit of the earlier filing date under 35 U.S.C. 120 as a continuation-in-part should be denied and the claim for priority under 35 U.S.C. 119(a)-(d) should also be denied.

However, unless the filing date of the earlier application is actually needed, such as to avoid intervening prior art, entitlement to priority in this CIP application will not be considered. See In re Corba, 212 USPQ 825 (Comm’r Pat. 1981).

The parent application claimed foreign priority under 35 U.S.C. 119(a) - (d). Applicant is reminded that if the foreign application to which priority was claimed matured into a form of patent protection prior to the filing of this application it qualifies as prior art under 35 U.S.C. 102(d)/172.

Where the conditions of 35 U.S.C. 120 are met, a design application may be considered a continuing application of an earlier utility application. Conversely, this also applies to a utility application relying on the benefit of the filing date of an earlier filed design application. See In re Chu, 66 F.3d 292, 36 USPQ2d 1089 (Fed. Cir. 1995); In re Salmon, 705 F.2d 1579, 217 USPQ 981 (Fed. Cir. 1983). In addition, a design application may claim benefit from an earlier filed PCT application under 35 U.S.C. 120if the U.S. was designated in the PCT application.

Note also In re Berkman, 642 F.2d 427, 209 USPQ 45 (CCPA 1981) where the benefit of a design patent application filing date requested under 35 U.S.C. 120was denied in the later filed utility application of the same inventor. The Court of Customs and Patent Appeals took the position that the design application did not satisfy 35 U.S.C. 112, first paragraph, as required under 35 U.S.C. 120.

1504.30 Expedited Examination

37 CFR 1.155 establishes an expedited procedure for design applications. This expedited procedure became effective on September 8, 2000 and is available to all design applicants who first conduct a preliminary examination search and file a request for expedited treatment accompanied by the fee specified in 37 CFR 1.17(k). This expedited treatment is intended to fulfill a particular need by affording rapid design patent protection that may be especially important where marketplace conditions are such that new designs on articles are typically in vogue for limited periods of time.

A design application may qualify for expedited examination provided the following requirements are met:

(A)A request for expedited examination is filed (Form PTO/SB/27 may be used);

(B)The design application is complete and it includes drawings in compliance with 37 CFR 1.84(see 37 CFR 1.154 and MPEP § 1503 concerning the requirements for a complete design application);

(C)A statement is filed indicating that a preexamination search was conducted (a search made by a foreign patent office satisfies this requirement). The statement must also include a list of the field of search such as by U.S. Class and Subclass (including domestic patent documents, foreign patent documents and nonpatent literature);

(D)An information disclosure statement in compliance with 37 CFR 1.98 is filed;

(E)The basic design application filing fee set forth in 37 CFR 1.16(b) is paid; and

(F)The fee for expedited examination set forth in 37 CFR 1.17(k) is paid.

EXPEDITED EXAMINATION PROCEDURE

Design applications requesting expedited examination and complying with the requirements of 37 CFR 1.155 are examined with priority and undergo expedited processing throughout the entire course of prosecution in the Office, including appeal, if any, to the Board of Patent Appeals and Interferences. All processing is expedited from the date the request is granted.

Design applicants seeking expedited examination may file a design application in the Office together with a corresponding request under 37 CFR 1.155 by hand-delivering the application papers and the request to the Customer Service Window located at the Randolph Building, 401 Dulany Street, Alexandria, VA 22314. For applicants who choose to file a design application and the corresponding request under 37 CFR 1.155 by mail, the envelope should be addressed to:

Mail Stop Expedited Design
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

Mail Stop Expedited Design should only be used for the initial filing of design applications accompanied by a corresponding request for expedited examination under 37 CFR 1.155. Mail Stop Expedited Design should NOT be used for a request under 37 CFR 1.155 filed subsequent to the filing of the corresponding design application. Instead, a subsequently filed request under 37 CFR 1.155 should be made by facsimile transmission to the centralized facsimile number 571-273-8300 with the notation “SPECIAL PROCEDURES SUBMISSION” included at the top of the first page and the corresponding application number identified.

Design application filings addressed to Mail Stop Expedited Design will be forwarded immediately to the Design TC Director’s office. Whether an application requesting expedited examination is hand-delivered to the Customer Service Window or mailed to Mail Stop Expedited Design, expedited processing is initiated at the Design TC Director’s office provided the application (including the design application filing fee) is in condition for examination and a complete request under 37 CFR 1.155 (including the fee specified at 37 CFR 1.17(k)) qualifies the application for expedited examination.

Upon a decision by the Design TC Director to grant the request for expedited examination, the fees are immediately processed, the application papers are promptly assigned an application number, and the application is dispatched to an examiner for expedited examination. In addition, the applicant is notified that examination is being expedited. The expedited treatment under 37 CFR 1.155 occurs through initial examination processing and throughout the entire prosecution in the Office. Whereas, an application granted special status pursuant to a successful “petition to make special” under MPEP § 708.02 is prioritized while it is on the examiner’s docket so that the application will be examined out of turn responsive to each successive communication from the applicant requiring Office action. For a patentable design application, the expedited treatment under 37 CFR 1.155would be a streamlined filing-to-issuance procedure. This procedure further expedites design application processing by decreasing clerical processing time as well as the time spent routing the application between processing steps.

Although a request under 37 CFR 1.155 may be filed subsequent to the filing of the design application, it is recommended that the request and the corresponding design application be filed together in order to optimize expeditious processing.

If an application requesting expedited examination is incomplete (not in condition for examination), an appropriate notice will be mailed to the applicant identifying the reasons why the application is incomplete and requiring correction thereof. The Office will not examine an application that is not in condition for examination even if the applicant files a request for expedited examination.

If an application requesting expedited examination fails to comply with one or more of the requirements for expedited examination under 37 CFR 1.155, but the application is otherwise complete, the applicant will be promptly notified and required to comply with all requirements under 37 CFR 1.155 within a shortened time period extendable under 37 CFR 1.136(a). Unless all requirements under 37 CFR 1.155 are timely met, the application will await action in its regular turn.

Once a request under 37 CFR 1.155 is granted, examiners will expedite examination by examining the application out-of-turn. Examiners are strongly encouraged to use telephone interviews to resolve minor problems. Clerical processing of the application will be expedited as well.

If the overall appearance of two or more patentably distinct embodiments of an article as disclosed in the drawings are different in appearance or scope, restriction will be required in accordance with MPEP § 1504.05. If applicant refuses to make an election without traverse, the application will not be further examined at that time, and the application will await action in its regular turn. Divisional applications directed to nonelected inventions will not qualify for expedited examination unless the divisional application meets on its own all requirements for expedited examination under 37 CFR 1.155. Similarly, expedited status will not carry over to a continuing application, including a CPA, unless the continuing application meets on its own all requirements for expedited examination under 37 CFR 1.155.

Once a request for expedited examination is granted, prosecution will proceed according to the procedure under 37 CFR 1.155. There is no provision for “withdrawal” from expedited examination procedure.

1505 Allowance and Term of Design Patent

1509 Reissue of a Design Patent

See MPEP Chapter 1400 for practice and procedure in reissue applications. See also MPEP § 1457 regarding design reissue applications.

For design reissue application fee, see 37 CFR 1.16(e). For fee for issuing a reissue design patent, see 37 CFR 1.18(b).

The term of a design patent may not be extended by reissue. Ex parte Lawrence, 70 USPQ 326 (Comm’r Pat. 1946). If a reissue application is filed for the purpose of correcting the drawing of a design patent, either by canceling views, amending views or adding new views, the provisions of 37 CFR 1.173(b)(3) must be followed. All changes to the patent drawing shall be explained, in detail, beginning on a separate sheet accompanying the papers including the amendment to the drawing. A marked-up copy of any amended drawing figure, including annotations indicating the changes made, should be submitted. The marked-up copy must be clearly labeled as “Annotated Marked-up Drawings” and it must be presented in the amendment or remarks section that explains the change to the drawing.

A reissue application must be filed with a copy of all drawing views of the design patent regardless of whether certain views are being cancelled or amended in the reissue application. Inasmuch as the drawing is the primary means for showing the design being claimed, it is important for purposes of comparison that the reissue of the design patent shows a changed drawing view in both its canceled and amended versions and/or show a previously printed drawing view that has been canceled but not replaced. In addition to drawing views that are unchanged from the original design patent, the drawing in the reissue application may include the following views, all of which will be printed as part of the design reissue patent:

(1) CANCELED drawing view. Such a drawing view must be surrounded by brackets and must be labeled as “Canceled.” For example, FIG. 3 (Canceled). If a drawing view is canceled but not replaced the corresponding figure description in the reissue specification must also be cancelled. However, if a drawing view is cancelled and replaced by an amended drawing view the corresponding figure description in the reissue specification may or may not need to be amended.

(2) AMENDED drawing view. Such a drawing view must be labeled as “Amended.” For example, FIG. 3 (Amended). When an amended drawing view is present, there may or may not be a corresponding canceled drawing view. If there is such a corresponding canceled drawing view, the amended and canceled drawing views should have the same figure number. The specification of the reissue application need not indicate that there is both a canceled version and an amended version of the drawing view.

(3) NEW drawing view. Such a drawing view must be labeled as “New” For example, FIG. 5 (New). The new drawing view should have a new figure number, that is, a figure number that did not appear in the original design patent. The specification of the reissue application must include a figure description of the new drawing view.

If a drawing view includes both a cancelled and amended version, and the change in the amended version is for the purpose of converting certain solid lines to broken lines, the reissue specification must include a statement indicating the purpose of the broken lines.

1510 Reexamination

See MPEP Chapter 2200 for practice and procedure for reexamination applications.

1511 Protest

See MPEP Chapter 1900 for practice and procedure in protest.

1512 Relationship Between Design Patent, Copyright, and Trademark

I.DESIGN PATENT/COPYRIGHT OVERLAP

There is an area of overlap between copyright and design patent statutes where the author/inventor can secure both a copyright and a design patent. Thus an ornamental design may be copyrighted as a work of art and may also be subject matter of a design patent. The author/inventor may not be required to elect between securing a copyright or a design patent. See In re Yardley, 493 F.2d 1389, 181 USPQ 331. In Mazer v. Stein, 347 U.S. 201, 100 USPQ 325 (1954), the Supreme Court noted the election of protection doctrine but did not express any view on it since a design patent had been secured in the case and the issue was not before the Court.

II. INCLUSION OF COPYRIGHT NOTICE

It is the policy of the U.S. Patent and Trademark Office to permit the inclusion of a copyright notice in a design patent application, and thereby any patent issuing therefrom, under the following conditions.

(A)A copyright notice must be placed adjacent to the copyright material and, therefore, may appear at any appropriate portion of the patent application disclosure including the drawing. However, if appearing on the drawing, the notice must be limited in print size from 1/8 inch to 1/4 inch and must be placed within the “sight” of the drawing immediately below the figure representing the copyright material. If placed on a drawing in conformance with these provisions, the notice will not be objected to as extraneous matter under 37 CFR 1.84.

(B)The content of the copyright notice must be limited to only those elements required by law. For example, “© 1983 John Doe” would be legally sufficient under 17 U.S.C. 401 and properly limited.

(C)Inclusion of a copyright notice will be permitted only if the following waiver is included at the beginning (preferably as the first paragraph) of the specification to be printed for the patent:

A portion of the disclosure of this patent document contains material to which a claim for copyright is made. The copyright owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent file or records, but reserves all other copyright rights whatsoever.

(D)Inclusion of a copyright notice after a Notice of Allowance has been mailed will be permitted only if the criteria of 37 CFR 1.312 have been satisfied.

Any departure from these conditions may result in a refusal to permit the desired inclusion. If the waiver required under condition (C) above does not include the specific language “(t)he copyright owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the U.S. Patent and Trademark Office patent file or records....”, the copyright notice will be objected to as improper.

¶ 15.55 Design Patent-Copyright Overlap

There is an area of overlap between Copyright and Design Patent Statutes where an author/inventor can secure both a Copyright and a Design Patent. Thus, an ornamental design may be copyrighted as a work of art and may also be the subject matter of a Design Patent. The author/inventor may not be required to elect between securing a copyright or a design patent. See In re Yardley, 181 USPQ 331 (CCPA 1974). In Mazer v. Stein, 100 USPQ 325 (U.S. 1954), the Supreme Court noted the election of protection doctrine but did not express any view on it since a Design Patent had been secured in the case and the issue was not before the Court.

It is the policy of the Patent and Trademark Office to permit the inclusion of a copyright notice in a Design Patent application, and thereby any patent issuing therefrom, under the following conditions:

(1)A copyright notice must be placed adjacent to the copyright material and, therefore, may appear at any appropriate portion of the patent application disclosure including the drawing. However, if appearing on the drawing, the notice must be limited in print size from 1/8 inch to 1/4 inch and must be placed within the “sight” of the drawing immediately below the figure representing the copyright material. If placed on a drawing in conformance with these provisions, the notice will not be objected to as extraneous matter under 37 CFR 1.84.

(2)The content of the copyright notice must be limited to only those elements required by law. For example, “© 1983 John Doe” would be legally sufficient under 17 U.S.C. 401 and properly limited.

(3)Inclusion of a copyright notice will be permitted only if the following waiver is included at the beginning (preferably as the first paragraph) of the specification to be printed for the patent:

A portion of the disclosure of this patent document contains material to which a claim for copyright is made. The copyright owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent file or records, but reserves all other copyrights whatsoever.

(4)Inclusion of a copyright notice after a Notice of Allowance has been mailed will be permitted only if the criteria of 37 CFR 1.312 have been satisfied.

Any departure from these conditions may result in a refusal to permit the desired inclusion. If the waiver required under condition (3) above does not include the specific language “(t)he copyright owner has no objection to the facsimile reproduction by anyone of the patent document or the patent disclosure, as it appears in the Patent and Trademark Office patent file or records...,” the copyright notice will be objected to as improper.

The files of design patents D-243,821, D-243,824, and D-243,920 show examples of an earlier similar procedure.

III.DESIGN PATENT/TRADEMARK OVERLAP

A design patent and a trademark may be obtained on the same subject matter. The CCPA, in In re Mogen David Wine Corp., 328 F.2d 925, 140 USPQ 575 (CCPA 1964), later reaffirmed by the same court at 372 F.2d 539, 152 USPQ 593 (CCPA 1967), held that the underlying purpose and essence of patent rights are separate and distinct from those pertaining to trademarks, and that no right accruing from one is dependent or conditioned by the right concomitant to the other.

¶ 15.55.01 Design Patent - Trademark Overlap

A design patent and a trademark may be obtained on the same subject matter. The Court of Customs and Patent Appeals, in In re Mogen David Wine Corp., 328 F.2d 925, 140 USPQ 575 (CCPA 1964), later reaffirmed by the same court at 372 F.2d 539, 152 USPQ 593 (CCPA 1967), has held that the underlying purpose and essence of patent rights are separate and distinct from those pertaining to trademarks, and that no right accruing from the one is dependent upon or conditioned by any right concomitant to the other.

IV.INCLUSION OF TRADEMARKS IN DE- SIGN PATENT APPLICATIONS

A.Specification

The use of trademarks in design patent application specifications is permitted under limited circumstances. See MPEP § 608.01(v). This section assumes that the proposed use of a trademark is a legal use under Federal trademark law.

B.Title

It is improper to use a trademark alone or coupled with the word “type” (e.g., Band-Aid type Bandage) in the title of a design. Examiners must object to the use of a trademark in the title of a design application and require its deletion therefrom.

C.Drawings

When a trademark is used in the drawing disclosure of a design application, the specification must include a statement preceding the claim identifying the trademark material forming part of the claimed design and the name of the owner of the registered trademark. Form paragraph 15.76 may be used.

Any derogatory use of a trademark in a design application is prohibited and will result in a rejection of the claim under 35 U.S.C. 171 as being offensive and, therefore, improper subject matter for design patent protection. Cf. Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 203 USPQ 161 (2d Cir. 1979) and Coca-Cola Co. v. Gemini Rising Inc., 346 F. Supp. 1183, 175 USPQ 56 (E.D.N.Y. 1972).

1513 Miscellaneous

With respect to copies of references being supplied to applicant in a design patent application, see MPEP § 707.05(a).

Effective May 8, 1985, the Statutory Invention Registration (SIR), 35 U.S.C. 157, and 37 CFR 1.293- 1.297 replaced the former Defensive Publication Program. The Statutory Invention Registration (SIR) Program applies to utility, plant, and design applications. See MPEP Chapter 1100.